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Association for
Information and Image
Management

MS303-1980

6 7 8 9 10 11 12

. . .

tfcoru rap£A^

A SELECTIVE MICROFILM EDITION

' PARTI
(1850-1878)

Thomas E. Jeffrey

Microfilm Editor and Associate Editor

Paul B. Israel Susan Schultz

Assistant Editor Assistant Editor

Assistant Editors: Research Associates:

Toby Appel Robert Rosenberg

Keith A. Nier W. Bernard Carlson

Andre Millard

Student Assistants

John Deasey Pamela Kwiatkowskl

Leonard De Graaf Joseph P. Sullivan

David Fowler Barbara B. Tomblln

Leonard S. Reich, Associate Director and Associate Editor
Reese V. Jenkins, Director and Editor

Sponsors

Rutgers, The State University of New Jersey
National Park Service. Edison National Historic Site
New Jersey Historical Commission
Smithsonian Institution

University Publications of America
Frederick, Maryland
1985

All Rights Reserved. Mo part of this publication including any portion of the guide and index or of the
microfilm may be reproduced, stored in a retrieval system, or transmitted in any form by any means— graphic,
electronic, mechanical, or chemical, including photocopying, recording or taping, or Information storage and
retrieval systems— without written permission of Rutgers, The State University of New Jersey, New Brunswick,
New Jersey.

The original documents in this edition are from the archives at the Edison National Historic Site at West
Orange, New Jersey.

BOARD OF SPONSORS

Rutgers, The State University of
Mew Jersey

Edward J. Bloustein
T. Alexander Pond
Tilden G. Edelstein
Richard P. McCormick
James Kirby Martin
Mew Jersey Historical Commission
Bernard Bush
Howard Green

National Park Service, Edison
National Historic Site
Roy W. Weaver
Edward J. Pershey
William Binnewies
LynnWightman
Elizabeth Aibro
Smithsonian institution
Brooke Hindle
Bernard Finn

EDITORIAL ADVISORY BOARD

James Brittain, Georgia Institute of Technology
Alfred D. Chandler, Harvard University
Neil Harris, University of Chicago
Thomas Parke Hughes, University of Pennsylvania
Arthur Link, Princeton University
Nathan Reingold. Smithsonian Institution
Robert C. Schofield. Iowa State University

CORPORATE ASSOCIATES

William C. Hittinger (chairman), RCA Corporation
•Arthur M Bueche. General Electric Company
Edward J. Bloustein. Rutgers. The State University of N J.
Cees Bruynes. North American Philips Corporation
Paul J. Christiansen, Charles Edison Fund
Philip F. Dietz, Westinghouse Electric Corporation
Paul Lego, Westinghouse Electric Corporation
Roland W. Schmitt, General Electric Corporation
Robert I. Smith, Public Service Electric and Gas Company
Harold W. Sonn, Public Service Electric and Gas Company
Morris Tanenbaum, AT&T

•Deceased

FINANCIAL CONTRIBUTORS

PRIVATE FOUNDATIONS
Alfred P. Sloan Foundation
Charles Edison Fund
The Hyde and Watson Foundation
Geraldine R. Dodge Foundation

PUBLIC FOUNDATIONS

National Science Foundation
National Endowment for the Humanities

PRIVATE CORPORATIONS AND INDIVIDUALS

Alabama Power Company
Amerada Hess Corporation
AT&T

Association of Edison Illuminating Companies

Battelle Memorial Institute Foundation

The Boston Edison Foundation

Cabot Corporation Foundation

Carolina Power and Ught Company

Consumers Power Company

Coming Glass Works Foundation

Duke Power Company

Edison Electric Institute

Exxon Corporation

General Electric Foundation

Gould Inc. Foundation

Gulf States Utilities Company

The Institute of Electrical & Electronics Engineers

International Brotherhood of Electrical Workers

Iowa Power and Light Company

Mr. and Mrs. Stanley H. Katz

Matsushita Electric Industrial Co., Ltd.
McGraw-Edison Company
Middle South Services, Inc.

Minnesota Power

New Jersey Bell Telephone Company
New York State Electric & Gas
Corporation

North American Philips Corporation
Philadelphia Electric Company
Philips International B.V.

Public Service Electric and Gas Company

RCA Corporation

Robert Bosch GmbH

Savannah Electric and Power Company

Schering Plough Foundation

Texas Utilities Company

Thomson-Brandt

Transamerica Delaval Inc.

Westinghouse Educational Foundation
Wisconsin Public Service Corporation

PUBLICATION AND MICROFILM
COPYING RESTRICTIONS

Reel duplication of the whole or of
any part of this film is prohibited.
In lieu of transcripts, however,
enlarged photocopies of selected
items contained on these reels
may be made in order to facilitate
research.

A NOTE ON THE SOURCES

The pages which were microfilmed for this collection
are in generally good condition in the original. There
are some pages, however, which due to age do not
reproduce satisfactorily. We have made every
technical effort to ensure complete legibility of each
and every page.

LITIGATION SERIES, 1875-1878

The Litigation Series includes the printed records of civil court
litigation, along with the records of Patent Office proceedings, which are
similar in many respects to litigation. These records consist of pleadings,
testimony, exhibits, attorneys' briefs and arguments, and decisions and
opinions of the court or hearing examiner.

During the 1870s Edison was embroiled in civil litigation relating to
his quadruplex and automatic telegraph patents. The Litigation Series
reproduces the printed record of one of the lawsuits contesting the patent
rights to Edison's quadruplex, as well as related Patent Office proceedings
which preceded the civil litigation. Although the Edison National Historic
Site has the printed record of only one of the suits, the "Quadruplex
Case," the exhibits in this record contain documents from other telegraph
litigation filed about the same time. The exhibits also include technical
drawings, agreements, patent applications and issued patents, and
correspondence. Together with the testimony, they provide valuable
information about the development of multiplex telegraphy, Edison's role
as an inventor and manufacturer of telegraph instruments, and the
multifarious financial arrangements which supported his inventive and
business activities.

A group of patent interferences constitutes another part of the
Litigation Series. The patent examiner placed patent applications in
interference when they embodied similar claims. The inventors were
notified and each was allowed time to take testimony and collect
evidence that would establish the priority of his own work. During the
1870s Edison was involved in numerous patent interferences concerning
the telephone, the telegraph, the electric pen, and other inventions.
However, the ENHS has the printed record only for those interferences
relating to the invention of the telephone.

In 1878 several of Edison's patent applications for the telephone
were declared to be in interference with applications of Alexander
Graham Beil, Elisha Gray, A.E. Dolbear, and others. Testimony, exhibits,
and arguments supporting the priority of the various inventors make up
the printed record. As in the telegraph litigation, the testimony of Edison
and his associates and the technical drawings that were submitted as
exhibits provide extensive documentation of the inventive activity in
Edison's Newark and Menlo Park laboratories.

Documents relating to civil court and Patent Office litigation
occasionally appear in the Document File and in other series on the
microfilm.

The litigation records have been filmed in the following orders

(1) Telegraph Litigation, five volumes.

(2) Telephone Interferences, seven volumes.

TELEGRAPH LITIGATION (QUADRUPLEX CASES)

The five volumes in this series relate to litigation involving several
of Edison's patent applications for duplex and quadruplex telegraphy.

Four of the volumes form a set with the general title "Cases and
Points" and the specific title "Quadruplex Case" on their spines. They are
numbered 70, 71, 72 and 73. Volumes 70, 71, and 73 contain a record of
the litigation in Atlantic and Pacific Telegraph Company v. George B.
Prescott, Western Union Telegraph Company, Lemuel W. Serrell and
Thomas A. Edison - the so-called Quadruplex Case. This suit was filed in
1876, went to trial in 1877, and was decided in favor of the defendants in
1878. Volume 72 contains Patent Office proceedings for 1875 and 1876
and closely related litigation which, like the Atlantic and Pacific suit,
involved the question of rights and title to seven Edison duplex and
quadruplex telegraph patent applications.

The four Quadruplex Case volumes were apparently given to Edison
by Everett P. Wheeler, an attorney for the Atlantic and Pacific Telegraph
Company. Each volume contains Wheeler's bookplate bearing the
inscription "Mr. Edison, from his friend Everett P. Wheeler." Volume 72
has been filmed first in the sequence because most of its documents
relate to Patent Office proceedings which chronologically precede the
Atlantic and Pacific suit contained in the other three volumes. The four
volumes have been filmed in their entirety, with a few exceptions that are
identified in the contents lists for the individual volumes.

The fifth volume, entitled Telegraph Law Cases-Miscellaneous. is
not part of the set given to Edison by Wheeler. It contains printed copies
of bills of complaint, answers, arguments, and briefs relating to Edison
telegraph litigation. Many of the items in this volume are duplicates of
documents in the Quadruplex Case volumes; these have not been refilmed.
Such items have been identified in the contents list for this volume.

A very complex nexus of litigation is represented in these five
volumes. In addition to the Patent Office litigation and the main case of
Atlantic and Pacific Telegraph Company v. Prescott et al., documents
from at least six other suits, filed during 1874-1878, appear in these five
volumes either as exhibits within the Atlantic and Pacific case or as
individual documents in the volume of Telegraph Law Cases. Most of
these suits relate to the question of ownership of Edison's quadruplex and
involve Edison, George Harrington, George Prescott, Western Union, and
the Atlantic and Pacific Telegraph Company in shifting combinations as
plaintiffs and defendants.

A chronological list of the litigation represented in the four
Quadruplex Case volumes and Telegraph Law Cases-Miscellaneous
follows.

A Chronological List of Litigation Represented by Documents in
Quadruplex Case (QC) Volumes 70-73 and in Telegraph Law Cases (TLC)

I. Daniel H. Craig and James B. Brown v. George Harrington, George
Little, Thomas A. Edison, the Automatic Telegraph Company and the
National Telegraph Company. Superior Court of the City of New York.
October 8, 1874.

1) A copy of the Bill of Complaint appears as Plaintiff's Exhibit
Z.8 in Atlantic and Pacific Telegraph Company v. Prescott et
aL, QC vol. 70.

II. In the matter of the application of George B. Prescott and Thomas A.
Edison for letters patent, dated August 19, 1874; opposed by George
Harrington, by petition dated January 23, 1875. (This proceeding is
entitled "Harrington and Edison v. Prescott" on some of the documents.)

1) Letters of George B. Prescott to the Commissioner of
Patents, in reference to the inventions conveyed by the
assignment of Thomas A. Edison for duplex and quadruplex
telegraphy. QC vol. 72.

2) Argument for Prescott. QC vol. 72.

3) Argument on behalf of Edison. QC vol. 72.

4) Statement of George Harrington of his relation with Thomas
A. Edison, and his improvements of fast telegraphy. QC vol. 72.

III. Western Union Telegraph Company v. Thomas A. Edison and George
B. Prescott. In Chancery of New Jersey. January 28, 1875.

1) Bill of Complaint and Injunction. TLC. A copy of the Bill of
Complaint only appears as Exhibit Z.6 in Atlantic and Pacific
Telegraph Company v. Prescott et al., QC vol. 70.

2) Answer of Thomas A. Edison. QC vol. 72.

IV. In the matter of the appeal of Edison and Harrington from the
decision of the Commissioner of Patents of March 20, 1875, to the Hon.
the Secretary of the Interior. (This proceeding is entitled "Harrington and
Edison v. Prescott" on some of the documents!)

1) Argument for Edison. QC vol. 72.

2) Argument of Smith and Redington of counsel. QC vol. 72.

3) Brief in behalf of Edison by Benjamin Butler. QC vol. 72.

4) Brief in behalf of George Harrington. QC vol. 72.

[List of litigation, p. 2]

5) Reply of counsel for Prescott to the respective briefs of
counsel for Edison and Harrington. TLC.

6) Brief in behalf of Harrington, in reply to briefs of counsel for
Prescott. QC vol. 72.

7) Affidavit of Thomas A. Edison in regard to his inventions of
duplex and quadruplex telegraphy. Notarized April 27, 1875.

(This item may be related to the 1875 Western Union v. Edison
and Prescott litigation rather than to the Patent Office appeal.)
QC vol. 72.

8) Argument for Prescott. This is a separate 14 page pamphlet
not found in the five bound volumes. It has been filmed
immediately following QC vol. 72.

V. In the matter of charges preferred by George B. Prescott against Z.F.
Wilber, a Principal Examiner in the United States Patent Office.

1) Letter of George B. Prescott to the Hon. R. Holland Duell,
Commissioner of Patents, preferring charges against Z.F. Wilber,
a Primary Examiner in the United States Patent Office.
December 18, 1875. QC vol. 72.

2) Brief of George B. Prescott. QC vol. 72.

3) Statement and brief of Z.F. Wilber, accompanied by critical
and explanatory notes by Prescott. QC vol. 72.

VI. Atlantic and Pacific Telegraph Company v. George B. Prescott,
Western Union Telegraph Company, Lemuel W. Serrell and Thomas A.
Edison. Superior Court of the City of New York. April 11, 1876. (The
"Quadruplex Case" presented in volumes 70, 71 and 73).

1) Amended Bill of Complaint. May 21, 1877. QC vol. 70.

2) Answer of George B. Prescott. May 13, 1876. QC vol. 70.

3) Answer of Thomas A. Edison. 1876. QC vol. 70.

4) Answer of Western Union Telegraph Company. May 28,

1877. QCvol. 70.

5) Answer of George B. Prescott to Amended Bill of
Complaint. May 28, 1877. QC vol. 70.

6) Plaintiff's Exhibits. QC vol. 70.

7) Testimony for Plaintiff. QC vol. 70.

8) Testimony for Defendants. QCvol. 71.

[List of litigation, p. 3]

9) Defendants' Exhibits. QC vol. 71.

10) Plaintiff's Testimony in Rebuttal and Exhibits put in on
cross-examination of Defendants' Witnesses. QC vol. 70.

11) Briefs, Arguments, Statements of Facts and Points. QC
vol. 73.

12) Findings. 3une 3, 1878. QC vol. 73.

13) Opinion. Sanford, 3. 3une 3, 1878. QC vol. 73.

VII. Thomas A. Edison and George Harrington v. Western Union
Telegraph Company; George B. Prescott: the Honorable R.H. Duell.
Commissioner of Patents; and the Honorable Z. Chandler, Secretary of
the Interior. Supreme Court of the District of Columbia. May 11, 1876.

1) Bill of Complaint. Appears as Exhibit 17 with the Bill of
Complaint in Western Union v. Harrington, Edison et al. TLC
(See numeral X below).

2) Brief on behalf of Complainants. TLC.

VIII. George Harrington and Thomas A. Edison v. Atlantic and Pacific
Telegraph Company and 3ay Gould. Southern District of New York. May

1) Bill of Complaint. Appears as Defendants' Exhibit 35 in
Atlantic and Pacific Telegraph Company v. Prescott et al. QC
vol. 71 (See numeral VI, 9 above).

IX. Thomas A. Edison and George Harrington v. Western Union Telegraph
Company and George B. Prescott. Southern District of New York.

October 23, 1876.

1) Bill of Complaint. Appears as part of Exhibit 18 with the
Bill of Complaint in Western Union v. Harrington. Edison et aL
TLC (See numeral X below).

2) Demurrer of Western Union. February 5, 1877. Appears as
part of Exhibit 18, cited above, TLC.

3) Demurrer of George B. Prescott. February 5, 1877. Appears
as part of Exhibit 18, cited above, TLC.

[List of litigation p.

X. Western Union Telegraph Company v. George Harrington; Thomas A.
Edison; Atlantic and Pacific Telegraph Company; 3ay Gould; Samuel Mills;
and Josiah C. Reiff; Thomas A. Edison, William M. Seyfert, William 3.
Palmer, Henry L. Dallett, 3r„ Augustus B. Ward, and Robert W. Russell as
Trustees of the American Automatic Telegraph Company; and George B.
Prescott. Superior Court of the City of New York. February 21, 1877.

1) Summons and Bill of Complaint. TLC.

2) Affidavits and Injunction Order. TLC.

Other Documents at the Edison National Historic Site
Relating to Telegraph Litigation (Not Filmed)

In addition to the five microfilmed volumes of telegraph litigation,
the Edison National Historic Site also has several other bound volumes and
printed briefs relating to the case of George Harrington and Thomas A.
Edison v. Atlantic and Pacific Telegraph Company and Jay Gould, which
was kept alive in the federal courts until 1913. (The bill of complaint in
this suit appears as Defendants' Exhibit 35 in Quadruplex Case Volume 71
on the microfilm.)

Exhibits and testimony from a 1905 hearing in the federal court for
the Southern District of New York appear in a 450-page volume entitled
Pleadings, Depositions and Proofs for Final Hearing. After deciding in
favor of Harrington and Edison, the district court referred the case to a
Master who was to conduct an accounting and fix damages. Testimony
and exhibits from this proceeding appear in an 814-page volume entitled
Testimony Before the Master. The archive at the Edison National
Historic Site also contains printed copies of briefs relating to subsequent
appeals of this case to the U.S. Circuit Court of Appeals and the U.S.
Supreme Court.

QUADRUPLEX CASE VOLUME 72 - CONTENTS

Hodg«?rlty °f InVention* Reducin8 an Invention to Practice by S.A.

pa™Phl!it reprinted from the American Law
Register for October and November, 1 %72. - -

referen^rL°fh»e-0rge5’ Prescott to the Commissioner of Patents in

z.zr^L .

9 page?. EXam,ner ln the United States Patent Office. December 18, 1875.
Patent Office. [1876]. 34 pages. ? Examlner ln the United States

against Wilber.TlIVe"] 55^1°' Charge$ Pfeferred by Prescott

B. P^Zeandf°4om^rASCp^ in tbe 7,atter of the application of George
i S7heSC0tt .n? Thomas A. Edison for letters patent, dated August 1 9 8
^fpage^05 Y Ge°rge HarrinSt°n- b7 Petition dated January 23, 1875.

LrrfrfT61? f°r u ' r* Edi.s?n in the matter of the appeal of Edison and

20, 1875°to the1 Hon °t the Commissioner of Patents of March

pages. ’ Secretary of the Interior. May 4, 1875. 15

S: hssiss 'omS" r.^n';tH“rine“" *nd “**>"
sstsiss “r“ ■«»

patent to issue to himself and George Harrington. [1875]. 58 pages.

[QC vol. 72 contents, p. 2]

12. Brief in behalf of George Harrington in the matter of Harrington and
Edison v. Prescott, upon application to the Honorable the Secretary of the
Interior for certain letters patent to issue to Thomas A. Edison and
George Harrington. [1875]. 9 pages.

13. Reply of counsel for Mr. George B. Prescott to the respective briefs
of B.F. Butler, Esq., counsel for Edison, and John H.B. Latrobe and
Leonard Myers, Esqs., counsel for Mr. Harrington, in the matter of the
appeal of Edison and Harrington from the decision of the Commissioner of
Patents of March 20, 1875, to the Secretary of the Interior.

Not filmed. Another copy with annotations in Edison's hand is
filmed in Telegraph Law Cases.

14. Brief in behalf of George Harrington, in reply to the briefs of counsel
for George Prescott in the matter of Harrington and Edison v. Prescott,
before the Secretary of the Interior. [1875]. 7 pages.

15. Bill of Complaint and Injunction. Western Union Telegraph Company
v. Thomas A. Edison and George B. Prescott. In Chancery of New Jersey.
January 28, 1875.

Not filmed. Another copy with annotations in Edison's hand
is filmed in Telegraph Law Cases.

16. Answer of Thomas A. Edison. Western Union Telegraph Company v.
Thomas A. Edison and George B. Prescott. In Chancery of New Jersey.
May 20, 1875. 29 pages.

17. Rules of Practice in the United States Patent Office. September
1875. 72 pages.

18. Affidavit of Thomas A. Edison in regard to his inventions of duplex
and quadruplex telegraphy. April 27, 1875. 21 pages.

19. Telepost. A System of Automatic Rapid Telegraphy. Advance
Prospectus No. 6538. Undated; ca. 1907-1908.

A 12 page circular containing information on the Telepost
system. Its developer, Patrick B. Delany, was an associate of
Edison's in the Automatic Telegraph Company during the early
1870s.

20. Argument for Mr. Prescott in the matter of the appeal of Edison and
Harrington from the decision of the Commissioner of Patents of March
20, 1875, to the Honorable the Secretary of the Interior. 14 pages.

Although this pamphlet is not bound in Volume 72, Prescott's
argument is part of the Patent Office proceedings involving
the title to Edison's duplex and quadruplex patent applications
and has therefore been filmed with related documents in this
volume.

PRIORITY OP INVENTION.

[Reprinted from the American Law Register for October

rmoniTY

INVENTION.

pon which it is to'oporato, and the moans by which it is to
o carried into cOcct. » .

2. Another thing to ho considered is the iongtlx of timo
Inch a man may spnd in maturing his device, and still
laintain his right to It over others who mennwliilo light upon •
t and reduce it to practico. Tlioro is evidently no absolute
imit to bo measured by days or yonrs, ns was in effect ob-
erved by Judge Woodbukv. No such limit can bo pro-
cribcd; tlioro may bo mnoliinos so complicated ns totako tlio
riginator all his dnys to complote them. Babbage, with his
^surpassed ingenuity and industiy, left his most important
ne unfinished for want of timo. lnvontors of this ordor will
lot often linvo rivals, however ; mid controversies will rarely
rise in which it will bo necessary to givo nny such latitude
o tho rulo. The character of tho improvement will usually
iirnish n sufficient oritorion n3 to tlio tim6 which may bo
llowed for elaborating it. Tho inventor should undoubtedly
mve all that is fairly requisite for removing whatovor dim-
sultics hinder tlio successful working of his dovieo. It seems
reasonable, also, that ho should bo allowed to complete such
Dthcr inventions as nro connected with it so closely that thoy
nro essential to its advantageous operation.

There is hut one qualification ; tho diligence must be ren-
lonnblo. This is generally considered to admit of tho pursuit
being suspended when sickness, destitution, or other hin¬
drances beyond control, prevent its being prosecuted. It
must not bo understood that a man may Tny it aside while
engaged in othor occupations, because thoy nre more premia- .
ing. Tho following remarks of Judge Mebbick, made in
Widtenham v. Singer, Sup. Court of Hist, of Columbia, will
^r repenting here, since tlioy are almost the only ones;
“qunent to tho subjects which linvo appeared in print.
The measure of poverty," (property) “ which orio must pos¬
sess boforo ho is required to oxoroiso nny diligence to prosecute
his rights is not to bo found in tho statute. It is; an oxcuse
vory readily mndo, which yot should not be too readily,;
istoned to. If a man bo utterly destitute of money, without
frionds, and incnpablo thereby of prosecuting an enterprise,
much indulgence may bo shown him ; but where ho has the
moans of carrying on enterprises ,of a kindred sort, equally.:
do„manding monoy nnd friends, and does carry them on, : his
ol ction topursuo those othor enterprises will not be regarded
in the law as an oxeuso for tho dolay in tho one where valu¬
able rights of othors, equally moriforious ns himsolf, and in the
outset of thoir successful, strugglo, . equally poor, are to be
prejudiced. An election thus mndo for his supposed advan-

PRIORITY- OF INVENTION,

PRIORITY

tnge or gratification at tlio time, according to tho plainest
principles of equity, must not bo invoked to the detriment of
another innocent party." This extract ombodics in n vorv
good degree the spirit tvhioh should govern in determinm*
questions like tlioso under consideration 8

Nearly all the general principles which have bcon here
7 wX683Cr0 Woolen Co.v. JorJ™

sfsSSp'-pas

industry. Whore two ®»r with proiier;

been dm first to conceive of flbnim ‘0lr t“los upon hav'"8i
will be determined in favor of thn n^’T01"0'1!’ tho uollto3t
without unreasonable interrupt, ?0° ^ ,“n sh|°'v1<lil,eon,c8i

earliest poriod, provided-he t en * g: 1?lck to tho
the device. en aa(* ln view the germ of;

wlmteKKi!:^ that every one

two years for coini)]otinfr;». \iIn4V?lll,.oa lH entitled to take
olso can forestall him ofVs’riim | “nng |hat l10rioJ »° ono
to practice, though ho has patent by reducing it ;

This is evidently derived from t?r ^ “plated it meanwhile. \
1870, corresponding to to n 24-U 8aotio11 of Ret of !
tho act of 1839. fn this se^Ho""011 lho ,7tl‘ seotion o^’
scribed which must bo r 1 ' c?r,tm.n conditions are r*

allord tho least ground for. the imm™ • * ' ?!"8 does not '
mentioned. It relievos an :invento?Tn wl,,oh luw been i
presumption of having donated Ids (L ° exlo,lt from tho !

But't r d t°i!,or'vi80 “*0 from h 8 “ellTn '° tie pubI,V ■
But it does not dispense with his n.i„„ fie,,Ing or using it!- '
m perfecting it, nor remit tho Zaltv diligonco' ■

gence It waives the right “ffffe'-fjo ]

forfeiture ho inours by suoh sale or uso, but it does not inter-
Tero between him and his rivals, nor undertako-to impair the
right they may acquire by their superior diligence. Tho
[first to invont is prima facie entitled to a patont. I bo law
[says, howovor, that one who conceived it. previously slinll bo
[preferred to him, .upon this condition, that bo lias .used ren-
[sonablo diligence iu adapting and .perfecting. Is this eondi- .
Rion dispensed with, because. tho statute rcliovcs one who bus
Isold or used tho invention for two years from tho eliargo ol
shaving abandoned it? There is not tho remotest connection
[between these several provisions of tho statute ; nnd there is
fco foundation for the notion that tho inventor who wishes to
[maintain his titlo to a dovico which has occurred to him, need

plot enter upon the elaboration of it .for two years.

II. -Tho next in right among sovoral claimants or an in¬
vention, is ho who was 'tho -first torodueoit to practice. Pri-
Lma facie, as it is sometimes .expressed, tlio first to put in
practice is the one ontitled to a patont. Ho gives place to
[ no one elso oxcept tho one whoso titlo has boon already dis¬
cussed Evon n patent in tho hands of his rival cannot pre¬
judice him. This wns so well assorted by Judge Sprague,
in Johnson v. Root, 1 Fish. 351, that his i language should be
repeated: “If, gontlomen, the invention was perfected, as I
have ulrendy said, or if not perfected, if Mr. Johnson used
reasonable diligence to porfect it, then lio lmd a right to have
it incorporated into his patent, nndto supersede those who
had intervened between his first invention, or discovery, nnd
■his subsequent Inking out of his patent. If lie lmd not per¬
fected it, nnd did not uso duo diligenco to carry it into elleet, and
in the meantime, boforo ho got his patent, somobody olse lmd
invented, and used, nnd incorporated into a .usoful, praoticnl
..maobino tlintmode of feeding, tbon ho could not by a subse¬
quent patont appropriate to himself what was embraced in
the former mncliino, botwoon bis onvont nnd tlio obtaining oi
ibis patent,” p. 869. Hero wo have recognized not only Lho
suporior right of tho first to concoivo who has boon indus¬
trious in maturing, over one who was first to reduce to prne-
tice, but also tho superior right of tlio lattor ovor tlio first to
conceivo, if ho has bcon remiss, as well as over the putentee.
Tho snmo viows wore enuncintcd by Judgo Uai.l, in Ransom
v Manor. 1 Pish. 262, ns this excerpt from bis decision will
ahow : “If the plaintiff -did not uso reasonable . diligenco to
porfeot tho invention patented after tho ulen or ltwns lirst
concoivcd, and in tbo monntimo other persons not only con¬
ceived tho idea, but perfected tlio mvontion, and practically
appliod it to public uso, boforo the invention of the plnintilt

hud been so fnrporfcotccl that it could bo applied to practical?
use, the plmntifls patent is void, becauso tlioy were not tho
first and original invontors of tho thing patented.” p? 272 It
is unnecessary to make other citations to establish the doe-
trmes set forth m the previous pages, or to explain them.

It is not projiosod to mquiro at this time wherein consists:
S E8 “ JnvoiUion, or putting it in use, or reducing
£‘° prfv°‘‘ce' * 1,0,1 18 sP°hen oi in tho extmets which have:'
m lgi lh“ “““"“‘•on of that subject is postponed
" ? Is the present' pur- >

Son 1 itJ!n?°ublcd y rcclllires that the iuven-

ur*ouldrl]'Zcdl«ci°t irpubl’icrrumy

should, m order to bis consistent with themselves, as well as
in nceordanco with tho system of patent laws
tJ: ‘ b“ P'.oJ’f V been observed tliat only two stages ofroa- i
turity to which an invention may bo brought are recognized 5
of .,leso.l,nSos' thus far, as having any bearing upon the rights

of he mven tor; one in which he has distinctly eSed
h stl b ncly r °l?;a,,(,m Upon "htotoiOtimiuoly attains
V'S obJ.ect- right to-do it at this time is contingent and

other idS rlmnl" 1 1,g°T bri%ri,,S il‘o perfection. ’l’ho
other is when ho has made a practical working machine om-

* Hisytit£ to ittsail“nd ^"S10mp,Td U in “otual operation.

' 1118 t0 11 18 then absolute, and can never be impugned bv
toyboUnaXrni fSl!0Vnr0r-i This is undoubtedly the latrine ,
Irt nT Zd-f?1i1° decisions of the .courts. Nothing/
s “Oi ‘ Of what is technically called a reduction to practical
previously achieved, will enable one to sustain a oatSS

ofthfuJund^r^n ArYvl‘0,nov,°r “ Intent is:JLiijecK

limt ot,llors ,lmtl mndo ‘ho invention before tho
MS tho .dofons? llas al'V“J;8 been hold to strict proof that ?
the prevu.ua invention was in like manner reduced to prae-
the 1n?mStlPP° p °t t, "a’ O 13 0,loll8h on this occasion to quote !i
K h ltW"1'.80 Spragok, in mu*v.,UrUUrwaod,\ i
idp,h-h1G°r T "S .ls >m1P°r‘«»‘ ‘o bo understood, beeauso the ;
idea has been earned all a ong, that if a prior Inventor has :
gone to a certain extent, although lie fall short of making a
complete machine, practically useful, those who eomo a^or
have no ngh to secure to themselves the advantage of the
invention. .Ill is is not law.” p. 100. If, indeed, either party
robes upon having eoneoived iho idea boforo the othcr'ancl

viuca mat t lio idea upon which it depends was distinctly
prohoiulcd. This is ono of the jjeriods to which tho law
tachcs significance. Tho only other ono recognized in
judicial tribunals is when it has been carried into pracl

III. Tho rights of patentees arc next to be considered.

These requiro no sup|x>rt from- decisions.- Thoy are
Ixxlictl in tho grant, and arc established unci defined un
the authority of tho national legislature. They need onlj
bo discussed in order to doterinmo under what cireumstm
thoy must yield boforo tlioso of a competitor. It is not
design of this paper to treat of all tho defenses which n
bo set up against an action for an infringement. But
have scon that a patentee must give way before ono who
reduced the invention to praotioo, and that both must yi
to tho ono who has conceived before either of thorn, and
been industrious in bringing it to perfection.

Although an inventor 1ms no remedy against those w
use his discovery until he obtains a patent, without which
has, indeed, no rights in it which tho law will recognize, il
by no means essential that be should lmvo one in order
defeat a suit brought by another patentee, who made the
vention after him. It is enough to show in defense that
reduced tho invention to practice before tho plaintiff .
was said by Judge WooDMjnv, in Coll v. Mm, Arms Co.
Pish. 108 : u The foundation is struck from under the feet
the plaintiff if tlio defendant is able to show that there wc

practice, find that mnttor is to bo examined horoafter. in an-
otlior nrticlo. When wo come to inquire liow controversies
between rival mvontors aro settled in the Patent Offico, wo
shall had more room for doubt.

I do not propose at present to examino at length into the
deoisions ol the 1 atont Offico, and of tbo Appellate Tribunal, ?
the District Court, now tiio Supremo Court of the District
ol Columbia. It would not bo easy to reconcile them, nor is
it nil-important for our purpose. It is sufficient to deduco .
from thorn two rules which may bo considered ns well ostab- S
h0U8l‘ not “ Pensively npplicd|
Ono of these is that tbo earliest ono to apply for a patent -
is presumed; to be the first inventor, until Wo wntran'k

St i" JtiLn’o,1& in- ihii

siasfc-

v. Itwhardson, Commr. Detl. 1870, p. 81. The filing of an
W^fonis, furthermore, the most cflcctunl stop toward i
®“,nrnu.''icntmg tbo bonofits of tbo discovery to the world "<
It lias, m fact/ all the morits that a rcdiietion to prnotico was" '
pi o viously intended to securo. Accordingly, it is sometimes
Sf™ °f .M. " reduction to practice, and regarded as vesting
tbo samo ngbts and privileges in tbo applicant. ° -

tbc Pa.m 'nn- -10.,^ .olimi"^d from tlm proceedings of
the 1 atont Office, is that m ordor to establish priority of in-
• ventiOn it is necessary to show a reduction of the device to
form, consisting1 in tbo embodiment of it in some such sliaiio !

frbmdt ob^nrant'1 *5?* b,m'<l1* o6ultl construct tbo apparatus |
iromit, or practice the process contomphitbd.' In this respect •;

a sneuWlmrinrn“nC0 ,B0 Yoral d«oi?ions which require that \

f published description, which is relied upon ■
to defeat a patent, should be equally full and oxplioit. It ‘is -
iPnl„rl‘°iapf k °f T1 nn embodiment ns a rcSnoing ofan
*? foT' aijd bonce to infer that this is all that is I
intended when the phrase is used iir the reports. » It signiflS I

1'nonymous with reducing to ]irnotico. Judge Stoht, fo
istaneo,' says in Heed v. Cutter, 1 Story 590: “In a rnco o:
iligcnco between two independent inventors, lie who firs
sduccs liis invention to a fixed, positive and practical form
ould scorn to bo outitlod to a priority of right to a paten
lorofor." p. 599. On the other hand, bo says in tbo saihi
nso: “Under ourpatont laws, no porson, who is hot at onci
10 first ns woll as original inventor, -by whom the invontioi
ns been put in actual uso, is entitled to a patent.” p. 598
o that to ontitle himsolf to a patent by reducing liis idei
i form, tho invontor must also linvo put it in actual use.'
However just and well founded theso rules may bo, wlion
roporiy applied, thoro can bo no doubt but that tlioy have
ion carried too far, on somo occasions. When tlio title' oi
patentee lias boon sut nsido, and the rights of ono who hni
been tbo first to put 'an invention in nutunl uso h'nvo boot
isregarded in favor of him who had moroly rondo a drawing
: n model showing tlio device, it is evident that' the dccis
■ns of "tho' courts liiive beon ontiroly overlooked, and the
Tico lias proceeded in granting patents upon principles alto-
3tlier different from those wliicli prevail in tho judicial tri-
unals of tho country.

When a judgo is considering tho validity of n patent wliioli
vs been assailed for want of novelty in tho invention, ant
lien tho Patent Office is called upon to determine whcthoi
will issuo a patent for an invention for which it lias already
-anted one,' or which of two competitors shall have one, the
icision of both tribunals should bo governed by tho rights of
to parties.’ No 9110 will suppose that tlioso rights are modi-
3d1 in consequence of tlioir boing tried by ono rather tliiui
10 other.' Tlioy depend on tlm Inw, which is the same
horever it 'is' expounded. A different rulo would not be
Icrntcd in any civilized community ; a rule whioli should
ve a man a titlcwbcn considered in ono place, which would
i denied him if considered in another, making liis titlo do-
ind not on any uniform principle of universal prevalence,
it on thoscono wlioro tho investigation of it was conducted,
Admit such' a jiractice, and tlio result would follow that -oh
-some = occasions’ tho Patent’ OfTieo would grant monopolies
wiiichtho courts would hot only rofuso to enforco, but would
declare Void. In others it would refuse' n pntont to 'the billy
person' who would be considered intho courts to bo entitled
*0 it; Upon on interference, for ihstnnco, it would'dooido ; in
favor of an applicant who find made a drawing boforo his
adversary, although the lattor- held a pntont, and had p’orfeot-

cd it nnd engaged in tho manufacture bcforo the other lmd
taken another step Yet upon a suit for infringing tho pat¬
ent obtained by such an applicant, it would bo condemned ns
invalid without hesitation. If in n similar controversy tho
applicant should show that ho reduced the invention to prac¬
tice before the patentee opiiosed to him, he would bo defeated,
if the latter was the first to innko a sketch of it, or oven do'
scribe it intelligibly. Yot m mi action- by the latter ho-
would be told on the same state or facts, that ho had no title
to tin*, invention; that it belonged in fact to his adversary.
It is only because such views as these are widely entertained 5
and insisted on, that they are noticed at such length Yet it

nms- 0b,gir?ril!bya Jo-g° of tho Al’l,clllltc Court, Mkk-
niCK in Widuraham.' v. Smijer, that “ it would bo strange

• t , „,7S!r"C Ul° h'V “ requiring ‘he commissioner to
issue a patent upon a state ol tho case, which, when next
that ,T:±“'rreilt to a aoar,1 of ]aw °r equity, would require 5
that court to pronounce tho patent utterly void." In con¬
formity with this is the language of Touchy, Alty. Gen. : « It
“ ’impossible that an executive officer should regard that as an
objection to the grant of a patent which tho courts of law are
bound to overrule as unavailable." 5 Op. of Atty.Gcn. 18
It can hardly be necessary to add, that the decisions of tho :
courts, the constituted expositors of the law-, ought to bo
balding upon tho office, and to over-ride its conclusions
Beside all this, they are, in fact, vested with direct authority
lo,r?Ycrfc 1,6 aet,on where they have refused a patent.

, , !,as. "0,“° to ]* recognised of late in tho office, nnd

several decisions of the commissioner, within two or three
years, have fo lowed the decisions of the eourLs in thoso par¬
ticulars in which they were once disregarded. Among item
C,«C7lI tl,e fiscs fspuchewin v. Richardson, Bornm.
Dec., for 1870, p. 81 ; and Gray v. I Me, Id. for 1871, p. 120
l^down'C f"' “ autl,0iity' ,U b« considered safe to
S-in following as rules which should govern the prae-

with the r^,,J^rSS8mC0 tl,^ar0 itt U°“fori“ity ;
.’,1' Wher.° ,of tjio parties to an interference appears to :
have eonccived the idea of the invention before the others I
and to have exercised reasonable diligence in ndnntimr ami -
l!eld0entXflt|UUtil l!° reduocd to practice, lie must bo 1
anion l V pai‘?Ilt competitors. Even though ‘

2" has reduced, it. to practice .before him, or has obtained 1 1
such* claim!' npP led for ono’ U wiM not 1,vail him against
2. -Whore no ono can maintain such a claim, tho party ?!

who first reduced tho invention to actual practice must bo pro¬
nounced the prior inventor, although his competitor lias a patent.

8. No ono can bo adjudged to lmvo anticipated a patentee
who did not oitlier rcduco tho invention to praotico before
linn, or conccivo it bcforo him, and rcduco it to praotico with
reasonable diligence.

Thus far wo are in strict ncoordnnco with tlio law of tho
land, ns expounded by its authorized tribunals. In wlint
“’"Hows wo have no such authority to guido us, but must bo
yorned by principles drawn from tho adjudicated cases
:l the practico of the offico. '

1. Where there has been no reduction of tho invention to
ctiial practice, and noitlicr party has a patent, it would-secm
s if judginont ought to bo given in favor of tho ono who
irst con ccivcd tho iden, and labored diligently upon it until
-io had so far matured it as to mako a satisfactory application
for a patent, provided this antedates tho rival application.

It would be more accurate pcrhnps to say that tho ono who
carries back his diligent improvement of the invention to tho "
earliest period should prevail. Tho filing of an application
ought to bo considered a constructive reduction to practice,
nnd entitled .to so much weight as this. 1 u

5. Eor tho samo reason it would seem that tho title of the .
first applicant should yield only to thoso who had cither m fcW 0
reduced tho invoution to practice first, or conceived it first,
and been industrious in elaborating it.

Both of those rules depond for tlioir force entirely on thoir
boiug in accordance with tho principles of tho system of patent
law. They derive no support from the rulings of tho courts,
or tho practice of tho offico. A patont granted in contraven¬
tion of them would not bo condemned probably by tlio courts
on that account. They are suggested for tho consideration of
tlio offico, and it dopends entirely upon- tho commissioner
whether thoy shall be adopted. ;

6.. Whore neitlior of tho parties can show any such ground
for a decision in his favor ns has boon pointed out, ho must
prevail who first produced such a delineation of tlio invention
as would ennblo an expert in tho art .to ombody.it in a work¬
ing machine, or an oporativo process. It is sufficient if ho
has done this in a machine capable of work for business pur-
! poses, in n working model, in drawings, or evon, as it has
bcou held, in an oral description. ■

7. In the absonoo of all othor grounds upon which to
determine suoh a controversy, it must bo decided upon the
presumption that tho earliest applicant is tho first inventor.

: S. H. Homes.

■12

REDUCING AN INVENTION TO PRACTICE.

DEDUCING A.N INVENTION TO PRACTICE. »

■ There is one stnge in the history of nn invention to which
the law attache* cs|iccinl significance. It is when the author
tins, ntndo such progress in porlhcting it. as to acquire a right
to a patent, of which no one who comes after him can dopriva
him, unless he forfeits it by his negligence. He has not only
an indefeasible claim to tho patent, but should any other por-
son obtain one, it will bo utterly void. AVhcn lie has so far
completed his invention, die is. commonly snid to Imvo ro-
duoed it to i 'practice. Hy this is meant something more than*
a mere embodiment of it in a visible form. What is implied
•in the phrase is, however, far. from being well settled. A care-
•tut study of the judicial decisions -loaves -it to some extent in
obscurity and doubt. Thc-following pages will lie dovoted
detcrmincTi't111011 °f thQm' 0,<ler to 600 how.far they .have"

A brief examination of the -English system -will die of nin-
Tmll w? ■I" Bl'a ","a°r'flki'>g- As was remarked by
Judge Stout, in Pennock v. Dialogue, 2 Peters 1: : “Many of;
the provisions of our Patent Act are derived from the prim i
ofP r?, P™0 VCC i'»hl<f 'JrV° l,revni,ed the construction !
of that of England. i he construction of it adopted by
the English courts, and tho principles and practice wliiefi
have long regulated the grants of their patents, as they must
have been known, and are tacitly referred to in some of tlio
jirQvisions of our own statute, nllbrd materials to illustrate

By the stalutc.21 Jac.I.c. 83, commonly called tho.Stntuto
of Monopolies all exclusive privileges of the character thus
sbrnfl l !01’ r, h ‘i0SB l,l,eTly oxisti"K- those which
n u 1 bo.f ' B™ord .8raute<*, 'vero abolished and declared
• uttLrly void, wUh a single exception. Patents .for invention
were saved fi-om the operation of tho act under .certain re-
strictions embraced in the oth and rttli sections. As tho lat¬
ter embodies the only conditions upon which such patents
can „ow lie sustained, it Ims become customary to spink of
tho law on this subject as if ut wore founded on the statute

deHvnal,|‘tt'|e?l‘l!U"S“r °Xp,;c88 <loclflrutio" that the grants
derive all their force from tho common law. Tho elauso in

t IiVda1 B0CtlOn,’ T ' .00l,,ni“? tl,e restrictions in force at
eondemnatiou pronounced by -tho
'le,t.“11 P*,.cnt8 horeaftor to bo made of tho

whtah rate nr,rk!"S °f?ny ,,n.au”or of now manufactures
which othors at tho tnno of making such letters patent and

DEDUCING AN ■ INVENTION TO. PRACTICE. 18;

shall not use." It is to this single clause that the
Jritish courts have been accustomed to look in considering
tho novelty of litigated inventions, and all their decisions on
that point havo been made to rest upon tho interpretation' of

Two conditions are evidently proscribed by this not, and
it lias always' been hold essential that tlioy should be com¬
plied with in order to rendor ri pntont valid. Olio is that tho ;
patentee should be “ tlio true and first inventor" of what was ;
embraced in liis ’monopoly. It may bo observed here that ns
it had beoii considered boforo tlio passage of the law, that tlio;
importer of nn invention from 'abroad, which was “ now within '
tlio realm,” might havo a valid patent for it, although he ob¬
tained it from othors; so it was decided in Myberry v. Ste¬
ven*, AAT. Pi C. 86, that ho was included within tlio saving
provisions of the statute, nnd this ruling is still authoritative.
It is of more consequence to bear in mind that this condition
will not bo held to have been broken, although others linyo
made the discovery previous to the patentee, provided he did'
riot obtnin his knowledge of it from them, and they have not '

E’ui it in use, nor' received a patent. As was said by Lord •
YNPIIUBST, in llomehill Co. v. Neilsoh, AV: P.,0.- 078: “The-
first person who discloses that invention to the public is the'
first inventor." p.. 719.

The other requisite to a valid monopoly is that “ others did
not use” the invention at _thc time of its being granted. By
this it has been understood, also, that tho supposed discovery
has not already como to' tlio knowledge of tho community.
Tho reason assigned for this is that the patent constitutes a
contract between tlio patented nnd the crown, the consider¬
ation of which on the one part is tho exclusive' privilege con¬
ferred on the grantee, and, on the otlior, tlio disclosure of a;
new art or mnnufnuturo to the poople. If. the nrt or manu¬
facture thus disclosed is already known, and n~* - '

leged, thoro is a failure 'of tlio consideration u|

,Tv

winch thff
oid, ns 'all /

grant was made, and it ‘is: therefore held to bo void, as 'all ;
royal grants arc when tho representations upon which thoy'
were obtained provo to bo unfounded. If tho invention has;;
been described in any' published work' before tho dnto of tho'
patent, ’it is void. This'willbotho result, also, if ithndbeon :
in public uso; Tlio law to this otlcet was settled boforo tlio
stat. 2i Jac.' I, was enacted; and 1ms 'over1 since been recog-
nixed!' Tho conditiou’has been incorporated into tho' patents
which contain a clause rendering thorn void if what is em¬
braced in them “is not a now invention1 ns to tho public uso
and exoroiso thorcof.” This elauso has been embodied in tho

grant because it expresses nn anciently established condition'
upon which all monopolies dopciul. No |>orson ever inter-
pointed such a condition into a royal grant without authority.

4 conjecture lias been thrown out whether it would not be
a sufficient objection to a patent to show that a machine Klee
that embraced m it had ticca constructed and exposed to ob-
sorvation before it wnsissued. (W. P. C. 719, note.) On uoimr
through all the English cases, however, not one can bo ioiind
m which sucli an objection has boon sustained where the pro- :
viously-constructcd apparatus had not licon omployed in '
actual work. The nearest approach which has boon made to '
a discussion of the subject was in Lewie v. Jfa rimy 1 W P
C. 493. It tliorc appeared that a machino operating upon tho
samo principle as the plaintiff’s had been brought ovor from
America, and had been seen by tkreo or four persons boforo
the date of his potent. No exceptions were taken to tho evi- ‘
denco oil tho ground that it had been kept seorot, thou-di it
was smd that if tho plaintiff' had scon it, or obtained a know-
loclgo ot the invention from it, it would linvo licen fatal to his ->
; sult-. But Baron Paiike made this rcmnrk: “Thero is no
caso m which n patoiitce Iiils been deprived or the benefit of !
i his invention, because anothor also had invented it, unless lie
had also brought it into use." In tho dearth of any decision
to tho contrary, Baron Pause's remark may be considered ns
embodying the English law on this point. "

That the use must bo iu public is settled beyond nil dis-
pute. It was resolved ns early ns 170(1, in Oolluntl’e Case
ViP- ,0'4,3; AH. B. 470; finv. Pat. Oas. 172. ft Z,’
.shown by tho dofenso that previous to tho plaintiff’s orici-
inating tho optical instrument for which ho lmd his patent '
anothor person had constructed one like it, and had used it.
But it was lioldon that ns Dr. Hall had confined it to his
i closet, and the public wore not acquainted with it, Dollaud was
to bo considered tho first inventor." The question was fully
disoussed also in Carpenter v. Smith, AV.P. G. 630; 5 M.nnd
W. 800, in which it was shown that a lock like that in con¬
troversy lmd been placed upon a gate in a public way, where
kf “vory passenger. Upon n hearing boforo
tto M bench, tho court hold that this was such a use in-
E}8 must’debar any one from over after maintaining a ■
whSri^’V- At .tho snmo tnno they madojho distinction
whioli has nlwuys boon recognised, that there should bo a use
in public, but not necessarily a uso by tho public, to givo it1
such an effect. The law established in tlioso cases has novor
been assailed, but has been uniformly adhered to in every ’

subsequent disoussion of tho subject. ' • ' -

tlio utterances of tho learned j udgo: who presided nrocorrcotly
sot forth in the report, lie wns evidently somewhat confused;
ns to the different purposes for wliioh such n prior omdodiment
might' bo shown, nnddid not distinguish between them. Ills'
remarks are hardly entitled to any great weight in them-;
selves, therefore, and they should never hnvc been cited ns an
authority on this subject, after the emphatic condemnation,
pronounced upon his rulings by all the judges who expressed!,
their opinions before. the House of Lords inthocasoof Ifouae]
hill Co. v. Neilson, W. 1*. C. 078. The following extract!.

. from that of Lord BnouotlAM sufficiently exhibits tlicir senti-:
ments: “But supiioso it" (the previous invention) “ was com-,
pletc, and suppose it is admitted not to liavo been a trial, then,
it is one of the greatest errors that can bo commiltcd.in point;
of law, to say that with respect to such an invention ns that,:
it signifies ono rush whether, it wns completely abandoned or.j
not, or whether it was continued to bo used down to the very,;
date of tlio patent. Provided it was invented nnd.publicly!

. used at the time, twenty or thirtyycars ago, in this case forty ;
years ago, it is perfectly immaterial— not immaterial to tho '
second question,, the second condition, namely, whether it. was
used or not at the time, of the . granting of tho patent, but • ;
totally immaterial to the other question,, which is equally
necessary to Ixs ascertained in the inventor's favor, wliothor
or not ho was the truo and first inventor.” p. 718. Wo learn
from this, it is true, that where it is attempted to bo shown
that tho invention was made by some one else lieforotho pat¬
entee, and was embodied in a working apparatus, proof; that
fcthe use of it was continued, or hnd boon abandoned,, may, be-:.

■ come pertinent, ns showing it was n. perfected; discovery on tho-;.

, one hand, ornn unsuccessful experiment on the other. We learn
just ns distinctly that, independently' of the issuo whetlior the
patentee is tho first inventor,, and whore, there is no question ;
whetlior such previous apparatus was perfect or not, it is es-.
sential for another purpose to dutermino whether such appa¬
ratus was.or wits not in ;publio use; ; that it is indispensable
that it should have boon not only in use, but in publio.nso,,in'.
order to make itnvnilnblo.nsndofenso. Andthoroisnotovonan
intimation in Jones v. Pierce, far loss in HousehillCo.y. Neil--
son, that tho publicity of tho uso is considered to.liaye any ,
bearing upon tho inquiry whetlior such previous apparatus,
was a, porfoot and completed discovery.: .. ,

Whore it appears that a, patentee, has raanufaoturedvbyi.a'.
secret process, and sold, tho product. before obtaining. liis pat-.-,
ont,. that. will bo pronounced n uso in public. .But, no, princi¬
ple of law is bettor sottlcd in England than this, that in ordor

i BEDUOINO AH INVENTION TO PBAOTIOE. 17

to nvoid a patont on tho ground that tho invontion was in uso .
by others, when it was granted, it must appear that tlio uso
Was in public. It is only by adhering strictly to this requiro-
Snont that tho public have an assurance that they shall be¬
come possessed of tho knowledge of the now art, and bo ron-
‘dorcil certain of sharing tho benefits of it.

1m.« courts, on which wo must chiofiy roly, cannot always bo
neiled. Ono principle may bo considered ns tolorably
sottlcd, although in conflict with sentiments which have ■
an extensive prevalence, 'l’hnt principle may bo thus

In order to constitute a reduction to practice, tho invon-
must linvo been embodied in a working machine, enpa-
jf being, used for business purposes, or if not capable of
, in something equivalent.

L’liis wns most emphatically asserted by Judge Simiague,
Howe v. Underwood, 1 Kish. 100, in which ho hold
lnngungo: “This is important to bo understood, bo-
e the iden has been carried all along, that if a prior in-
tor lias gone to n certain extent, although ho fall short of
ting a complete machine, practically useful, those who
e after have no right to secure to themselves tho advan¬
ce tho invention. This is not law.” p. 108. Tlio quos
whetlior the previous invention wns an abandoned ex-
I penment was also raised in that case, but the passage hero
quoted was announced ns a maxim entirely independent of
I that consideration. Tho snmo learned judge had previously

I expressed his opinion, in Many v. Sizer, I Fish. 17,in this
mnrinor: “Now experiment alone is not sufiicicntio consti¬
tute priority of invention. The nrticlo must be completed
for public uso, and tho result must bo known, although it is
not necessary that it should be actually used bv tlio'piiblic."
p. 20. He evidently has in mind, in this last clnuso, tho dis-
tinotion constantly observed between a uso in public, and,

| what has always been regarded ns ‘unimportant, a use by the
public. To tlio same cflcct as those two decisions aro the ob¬
servations of Judgo Cmi'FOKU, in beymour v. Osborne, 11
AVnll. 610 : “Ho is tho first inventor in tho sonso of tho patont
law, and untitled to a patent for liis invontion, who first per¬
fected and adapted the snmo, to use; and it is well settled
that, until the invontion is so perfected and adapted to use, it
is not patentnblo undor tho patent law." p. 652. In Pitts v.
Wangle, 2 Fish. 10, also it was said by DitUMMONi), J. of the

for tho purposos contemplated, but it must have beon capable
of such uso." p. 15. And in tbo Union Sugar Refinery v. ■
MaUheson, 2 Fish. 000, it was bold tlmt tbo prior invontion ,
must linvo, been 11 reduced to pructieo in tho form of an I
oporntivo machine.”

It cannot be necessary- to refer to any othor casos on. tli
point, since tho law thus dofmed lias novor been question!

structcd on tho samo prinoiplo as. that described in tho plain¬
tiff's patent had been made and put in operation several years
before ho originated it. It had been worked by hand only,
and proving not to bo profitable, wns rolinquishod. The
plaintiff ’s. machine wns open, to the samo objection, and it wai
successful only because it was operated: by power. It was
urged on his part that tho former mnohino was only export
mental. While-, this was admitted by Judge Washington,
who presided at tho trial, ho held, nevertheless, that it wns
sufficient to, destroy tho plaintiff’s claim as an inventor. Ifc
is ovidont.tlmt tho mncluno wns experimental, nftor nil, on’ -
in a secondary sense, and in a finnneinl view.. As a mnclii
it was perfect, and capable of uso for business, and comes
within tho rulo which has beon advanced. Tho case of Grey
v. James , 1 Pot. C.C. 8!)4 and 470, may be thought to resem¬
ble that of Walam v. Bladen, but it is cnunlly in accordance
with tho principle. It may bo. safely laid down, therefore, ns
the doctrmo of tho law, than nil invention can bo said to bo
reduced to practice: only when it lias been embodied, if-
susccptiblo of it, in a mnohino capable of being used forprnc.:
tical purposes, as distinguished from one thnt is merely ex¬
perimental. If not suscoptiblo of boing so embodied, soino
step equivalent to that must have beeu taken with it.

II. It is more difficult torcconuilc what has been held by dif¬
ferent courts ns to tho necessity of an invention hnving beon
reduced to actual prnotico. Thnt it must lmvo beon so reduced
under some circumstances, thoro can bo no doubt. From
tlib dicta uttered in tho cases of Seymour v. Oslome, and Pitts
v. Wemple, oiled nbovo, and Woodman v. Stimpsori, 1 Pislier
J)8, it. would scorn, howovor,.thnt there may bo eases in which -
it would bo found suflieiont to embody tho supposed inven¬
tion in an apparatus socomploto thnt it would bo- employed
for business purposes to accomplish tho work intonded. In j
addition-to these, tho languago of Judgo Stoiiy, in Washburn
v. Gould, 8 Story 122, may bo adduced. “ At any rnto ho is.;
tho invontor who is entitled to a patent, who first brought ;
tho maobino to perfection, and made it capnblo of useful 1

s inny bo employed which scorn to reeoghizo tho mor
rporntion of an idea into n material, oporntivo form, a
ciont without its being tosted in work, at tho very tim
n no intention: of dispensing with thnt requisite is cntci
xl.. It is evident thnt no expressions like thoso cite
ra, which wore made without roferonco to tho questior
del- bo relied on to sustain the doctrine undor discussior
in, in Ransom v. Mayor, 1 Fish. 252, these remarks nr
buted to Judge: Hall: “ The party who embodies tli
oiplo, and makes it available for practical use, is tin
y who is ontitlcd to a patent, and to protection under tin
nt law.” p. 270. It may bo doubted whether he iutondet
this to nogntivo tho idon that it wns nuccssnry thnt tin
odiment should lmvo been put in practice, since nothin;
le case called for such an expression. In Parkhursl v
<mun, l Blntulif. 488, Judgo Nelson's languago wns this
constitute a prior invention tho party alleged to linvc
uccd it must linvo proceeded so far ns to reduco his'iden
raotico, and embodied it in somo distinct form. It
t linvo boon carried into practical operation, for ho is en
1 to a patent, who, boing nil original inventor, lias first
ioted the invention, and ndnptcd it to practical uso." p,
( Vide Post 80). In Agawam Woolen Co. v. Jordan, 7
I. 688;we have tho viows of the highest tribunal ns eon-
diby Clifford, J.:- “Ho is tlio inventor,- and’ is entitled
patent, who first brought tlio machine to porfeotion, nnd
i it capnblo of useful operation." p. 802. Wo lmvo them
in words alxiut tho samo, of Nelson, J., in Whileli/ v.
•jne. Id. 685 : “ For ho is the first inventor, and entitled
™ .. patent, who, boing an original. discovoror, has first per¬
fected and- adapted tlio invontion to notun] uso.” p. 087,
These grave declarations coming from such high authorities,
dosorvo sorious consideration ; and if wo could only bonssur
cd tlint they wcro uttcrcd with roferonco to tho prinoiplo of
law under disoussion, they would- inoreaso tho difficulty of
ascertaining wlmt is tho true doctrine. But it is by no

REDUCING AN INVENTION TO PRACTICE.

is Coffin v. Oi/ilen, S Fish. 040, which 1ms
tod as determining that it is not necessary
,’ico lues bcon in use in order to dofeat a
Lined hy another afterward, Tho learned

live done work, or been capable of.
been more experiments, afterward
y were in faet operated for a greater
iportance, except so far as that inny
re that they were or wero not moro
v the fact is of consequents). But
icy were inaeliinus capable of doing
e same arrangements ns the plain-
liincs, then tho fact that tlioy were
, and then abandoned for othor rca

put into a mill. Tho presiding judge charged the jury that
they might, find that llio patented wheel was wanting in no¬
velty without evidence that tho other had been actually used.
The report is unusually brier, and the reasons upon which
these instructions wore founded, nrc not hinted at. The pa¬
tent was dated in 182!), tho trial took plnee in 1849 ; yot no¬
thing is said on tho subject of the abandonment of the old
whcol, although thcro must havo been a strong presumption
to thnt effect from tho lapso of time. Tho case stands in
striking contrast with thnt of Parker v. ffulmc, hereafter
cited, p. 28, which was brought upon the samo patent, and
when wo compare with it the marked caution with which
tho evidence of a previous construction was thoro rccoiycd,
wo cannot resist the conjecture that tho report in Parker v.
Fenjumn, is very imperfect, and great hesitation must bo
felt in relying upon it. This doubt will bo increased when
tho ruling of the samo learned jurist, in Foote v. SiUktj, 1
Blatehf. 440, is read.

mee3. These, ho said, “ must bo regarded substai
uso of tho reversing mechanism.” Soino hesitat
i felt as to tho soundness of this conclusion; tho
is clear, can hardly be oited ns an authority ag
tiring proof of use in such cases.

It must bo conceded, nevertheless, that tho langua
trued judge lends countenance to tho idea thnt the
rlinps tlio only object of insisting that it should 1
nt what is alleged to have anticipated tho patent
vention was employed in work, is to establish til
complete and practical embodiment, of it. If that
Hows thnt other proof of its completeness may 1
ted. Now, there is no question but that proof
iploymcnt has been treated as material in this co
jllns in England, when the question has been raised

limed thnt tho invention had been innilo bv somo ono else
foro tho patentee, ho has been called upon, ns an indispensn-
o condition, to show that it had been put in uso ; and this
s boon insisted upon without any reference to tho com-
otencss or imporfcction of tho formor embodiment or it,
d oven wlioro no such question was raised. The proof has
beon held essential on an ontiroly distinct ground ; bocausoit
is prescribed by tho stntuto. And it is so proscribed for tho
samo reason that it was in tho English system, in ordor thnt
tho knowledge of it by tho public might bo insured.

In Wabon v. Station, 4 Wash. 580, it was tho very question
mndoby tho plaintiff ’s eounsol thnt tho mnohino, which' the

REDUCING AN INVENTION 1

TO PRACTICE. .

patented, lmd nevor been in use. And the court admitted the
principle, hut held tlmt the evidence was not sufficient to sus¬
tain tho plea, 'i'hc objection had also licon tuken tlmt the
prior machine was imperfect, nml it was answered upon
grounds entirely distinct from that of its completeness having,
been demonstrated by its successful operation. Tho necessity
of its being shown to linvo been worked was founded alto¬
gether on tlie language of tho statute. Judge Washington,-,
when taking up the question, says: “But the point mainly;
relied upon by the plaintiff's counsel :is that no evidcuco wtisr
given that Christian’s machine was ever .used within the true |
meunin <j of that expression in the patent law.” p. 588. Tlicro j
is not the slightest indication that such evidence was called; j
for in order to repel the charge that the machine wits not I
practically successful. Tho views of Judge Story on this
question may be gathered from this language or his in Bed¬
ford, v. lfu.nt, X Mason 802. “Every subsequent patentee, al¬
though nil original inventor, may be defeated of his patent
right upon proof of his prior invention being put in use.” ,p.
804. The intent of the statute was to guard against defeating ;
patents by sotting up a prior invention which Twd never been ■
reduced to practice (p. 805); not, it scorns, to repel tho pro- i
i sumption of imperfection arising from its abandonment.

I And also from what fell from bis lips in Ileed v. Cutler, 1 Story
j 500: “ Under our patent law, no person who is not the first,

1 ns well as the original inventor, by whom tho invention lias
' been perfected, and put in actual use, is entitled to a patent."

p. 50(1. While it is true that in both those euscs the earlier
: embodiments of tho invention wero charged with not being
| effective, tho fact tlmt they lmd been in operation was not
( once alluded to ns a rofutntiou of tho chnrge. Other means
woro taken to show that they wore capable of accomplishing
their proposed functions. Tlmt they lmd not been in uso was
taken up as nn independent objection to their being intor- ;
posed ns a bar to tho plaintiff's patout. It was treated not
only os an independent, but as in itself a sufficient answer to '
tho dofoiiso. It was mot in tine, not by proof that the .ma¬
chines wore practical and effective, but by proof that they ■
lmd been actually employed in business, as tho only way of >
satisfying tho court tlmt tho inventions woro not now- when j
pntontod ns required by tho stntuto.

In Parker v. JTulme, 1 Fish. 44, again, nn attempt was
mndo to show that a wheel similar to that for which tho
plaintiff .hold a patent had boon made .lieforo the patentee
originated it. • Inspecting this, the presiding Judge, Kane, ■ ■■

Sivo tlioso instructions to the jury: “Oue portion of Mr. . ;
ulmos' testimony callsfor this remark, that it is uoteuough

28 REDUCING AN INVENTION TO PRACTICE.

tlio public. Tlio earliest enso in which tho subject enmo dtf
tinctly under judicial consideration is Bedford v. Hunt, 1 Mas. I
802, decided in 1817, nnd id ready citod. It was slion'n dial !
tlio article monopolized by llie plaintiff lmd lwcn mnniifms* i
tured many years before lie originated it. Tlio principal
question on. the trial was ns to the extent to which it in
have beon used in ordor to render the patent void. Jin
Story answored the question thus: "But if the first inven
reduced bis theory to iiraotice, and put his machine or other i
invention into usu, the law ncvorcoiild intend that the greater !
or less use, in which it might be, or the more or less widely
the knowledge or its existence might circulate, should con¬
stitute the criterion by which to decide upon the validity of
any subsequent patent Tor the same invention.” p. 805. This
decision was founded upon the statute of 1708; but after the
passage of that of 1830, ho held the same doctrine even more
unequivocally in Heal v. Gutter, Story 5U0, declaring himself
in these terms: “If the invention is perfected and put into
actual use by tlio first and original inventor, it is or no con¬
sequence whether the invention is extensively known or usud,-
or whether the knowledge or use thereof is limited- to a few

her the invention is extensively known or used,
i knowledge or use thereof is limited- to n few
n to the first inventor himself." p. 500. And
with this lie took occasion to pronounce Dal-
n “just exposition of the patent law of this
rer correctly it may have been decided under

luml's case not n “just exposition of the patent law of this
country however correctly it may have been decided under
that ol England, p. 508.

Whatever disposition to treat these decisions ns obso¬
lete may be lelt, they havebceu clearly recognized, nnd their
authority acknowledged in cases of too late a period and of
too high a character to allow of their lining disregarded. In
Oayler v. Wilder, 10 How -177, decided in 1850, the subjoct
must have been under consideration in the Supremo Court of
the United States. In determining the case scvoral points
wore noticed, which, after all, cannot be esteemed very siir-
uifiennt; such as that the producer or the safe, which it was '-
alleged was made before that of the patentees, nover -W»m»
awnro of tho value of his invention ; that its construction '
was unknown to others, though, as was remnrkcd, tho me-
j-l,?.nl<? -.° mn“° 14 mufit *mvo been cognizant of it. It is

dillicult to see that much importance could ho attached to '
these and othor incidents commented upon. Whon tho very ■
able jurist who pronounced tlio judgment of tho court, Chief i
Justice i. ANE V, came to dismiss tlio import of the expression in !
■the sixth section of t bo-law of 183(1, “ not known or used by
others before his or their invention or discovory," ho founded
his in orpretatmn of it upon tho clause in tho fifteenth section. 1
in which it is provtdod that a patent should not bo hold void 1

i account of tho inventions being known or used nbroad, i
10 patentee woro not awnro of it. IJo inferred from this tin
entitle himself to a patent ,' an originnl discovorcr of an in
•ovomont nceil not bo in a strict sonso tlio first invonto
lice his title could uolbc.impcnchcd although tho imjirov
out hud been made by others before him. lie snid, thor
re, that “ the clause in question " (that oontainod in tl
Icont-h section) “qualifies tho words lioforo used" (tlios
lotcd from tho sixth), “and shows that by knowledge an
o tho Lcgislutnrcmcunt knowledge and use existing in
tinner accessible to the public.” p. -157. Now, if the judj
mt of tlio court had boon made to turn on this intorprotc
in, and the Connor safe had been pronounced no bar to th
tent in suit, on tlie ground that it was not accessible to th
blic, it would liavo bjou a rovorsal of tho doctrine nil
need in Halfuni v. Hunt and 11 ml v. Cutter. And if Ilia
etrino was , not approved by the court thoro could have beoi
fuiror opportunity to have set tho profession right in l oin
a -to it. But apart from tlio quotation givou abovo tlior
not the slightest allusion to it. yOn tho contrary tho dcci
u assumes that tho Connor safe was prima facia fatal ti
linlifi ’s title; but assorts that it had ceased to liavo Ilia
jet because tlio jury must bo presumed to have found tha
ind been forgotten, and buried in oblivion, like a
lie learned judgo even holds this romarkablo language
rningit: “ Wo do not understand the Circuit Court to
id that tho omission of Connor to try the valuo of his saf
- proper tests would deprive it of its priority ; •mrltisomissm
briny it into public use. Ho might hnvo omitted both, am
to abandoned its uso, nnd liccn ignorant of tlio extent of it<
luo; yot if it was tlio sumo as Fitzgerald's, tho lattor conic
t, upon such grounds, bo entitled to n patont; providod
jnnor’s safe, and its modoof construction, woro still in the
rnnory of Connor before tlioy woro recalled by Fits-
raid’s patont.” p. 498. In otlior words, Connor’s safe was
bar to a |>atont for tho samo improvomont to any subsequent
ontor of it, so long ns Connor romoinbored its construe-
in, notwithstanding it hnd novor been in public uso. Com
loring Hint the decision turned on tlio knowledge of Connor’s
fo having been lost, nnd not on its having been kept secret,
is vory manifest that tho court folt tlio weight of Judge
'onv’s decisions, and it was to avoid tlio oflbet of thorn that
oy resorted to tlio , oxpediont of treating Conuor’s . snfo as
ving been forgotten.

In Hick v. Lippincott, 2 Fish. 1, whioh wns tried two or
reo years allot- Oayler v. Wilder, the validity of the patont

REDUCING AN INVENTION TO WUCTICB.

REDUCING AN INVENTION TO PRACTICE.

In liia instructions to tlio jury ho emphatically ro-ossorlcd
the doctrine advanced in -lialford v. limit and Heal v. Cutler,
going so far as to adopt tlio very language quoted above from
the former report. There can be little doubt, therefore, that
the law of those eases was in the minds of the court when
they had that of Qayler v. Wilder under consideration. The
same question must have arisen also in Caltoon v. Ring, 1
Fish. 397, and 1 ClilK 592, which was tried before Judge
Cl.U'FOltl) iii 1859, and at. subsequent times. It was shown
by the defendant that before the plaintilV made his invention,
one Luce had constructed a perfect machine embodying it.
It would seem that it was kept secret; but it is ovident that:
this was not deemed sufficient to prevent its operating fatally
against the suit. The court, therefore, adopted n course simi¬
lar to that pursued in Qayler v. Wilder, and charged the jury
that, whether it had been used or not, if it hnd lieen broken
up, and its materials used for other purposes, or lost (of nil
which thcro was proof), and its construction was only re¬
called to tlio memory of the maker by the present contro¬
versy, etc., its existence would not in validate Cahoou’s pntent.
(p. 411). Tlio learned judge must therefore have regarded:
the secret existence of the machine ns in itself a bar to a
patent obtained by any subsequent inventor, unless that ob¬
jection were removed in the way ho pointed out. Again in
Unit v. Bird, .3 Fish. 595, tried before Judge lit.ATGIIKOItli in
1887, tlio prior machine, upon which the defendant relied,
had always been kept carefully secluded from observation.
Yet this was manifestly considered as not a sufficient answer
to it. Instead of pronouncing against it on the ground that
it had never been in public use, the court laid hold of eir-f
cum.staneus from which they condemned it ns an abandoned
experiment. And they eito at length tlio ease of Qayler v.
Wihler ns analogous to the ono before them, and ns sustaining
their decision.

Judgo Story's doctrine has also been supposed to have;
boon directly affirmed in Coffin v. Ogden , 3 Fish. (140; but:
this is not homo out by a ‘careful examination of the report'
It was ruled by the court that an exhibition of the alleged,
previous invention to two or tlireo persons was equivalent to-
giving the knowledge of it to the public. Tlio necessity of-
a publiu uso of it was distinctly rceognisod, therefore, al¬
though the evidoneo by which it was held to have been made
out, might not generally bo hold sufficient.

If tlio dootrino has never boon assorted anew in any of our
courts in express terms since tlio enso of Reed v. Cutler, it;
lias nqvor,on tlio other hand, been condomucd in any instance ■
in wluok it was tlio propor subjoot of adjudication. And an;

elementary writer of high authority evidently entortnins an
opinion in conformity to it. In the 3d edition of Curtis on
Patents may bo found this sentence: “If tliu tiling patented
has once lieen actually mid completely invented or discovered
before, however limited the use, tlio patent is in validated,” etc.,
Sec. 87. Again, when speaking of some English decisions,
it is said: “If wo examine the facts of tjio several cases, and
the tests applied to them, tnkiugenro to remember that under
our lnw on tlio question of novelty, the publicity of the prior
use is not otherwise imjwrtant than as a circumstance tending
to show that there was or was not a completed invention,”
etc. See. 88. -lie lias nowhere declared his opinion more ex¬
plicitly, it is true; but what his views are is evident enough.

_ While this matter lias not been made the subject of any
distinct adjudication of late, there have been several occasions
in which remarks have fallen from the bench, plainly indi¬
cating that a different view of the law was entertained. The
first extract, which was given from tlio opinion of Judgo
Taney in Guyler v. Wilder (Ante 27) shows that such
wero his impressions, although he avoided a conflict with the
authority of those cases. In Jlasehlen v. Ogden, 8 Fish. 378,
Judge Sherman in n brief summary of the law upon tlio
subject included this principle: “The prior use of an invention
must lie a publiu uso and not a private use. If an invention
is made and used in n private way, and then thrown aside,
and not given to the public, a patent granted to a subsequent
inventor would bo a valid patent.” p. 380. Ill Adams v. Ed¬
wards, 1 Fish. 1, Judge Woourury, after commenting upon
the cftcct of using an invention two years, leaves that subject
and pirocccds thus: “If a man has an invention, and nobody
knows of it, then the uso of it cannot debar another porson
from inventing or patenting it." p. 12. •

Tlio expression of tlicso opinions so widely diflering from
tlioso of Judge Stoiiy, justify an inquiry into tlio grounds on
which his wore founded. Tub only reason lie gives for them
is to bo found in that clniiso of the lnw which, as lie snys,
“expressly, declares that the applicant for a pntont must be
the first as well as an original inventor.” In support of this
he quotes from his own opinion in Pcnnoeh v. Dialogue, 2
Pet. 1, wliero ho said tho Patent Act “ gives tlio right to the
first and truo inventor, and to him only ; if known or used
boforo his supposed discovery, ho is not tho first, although ho
may bo tho true inventor, and that is tho caso to which tho
clnuso looks,” p. 28. Now it is' a little remarknblo that tho
very snmo expression is used in tlio English Statuto of
Monopolies, wliioh restriots tho grant of a patent “ to tlio
trno and first invontor." Our statute rends, “the original

and first inventor;" but the learned judge lays no stress on'
the word original ; in filet, lie uses it as interchangeable with
the word true in the last extract. It is the more remarkable
because it was in this very case of Pcnnock v. Dialogue that
ho explained how greatly wo were dependent upon the con.::
struetion of the linglish law for the proper interpretation of
our own ns mentioned on a fortnor page. (12.) lie said:
further on that occasion, “The words of our stntutc are not
identical with those of the statute of Jntncs, but it can scarcely’
admit of a doubt that they must ltnvo been within the con¬
templation of thoso by whom it was framed, ns well as tho
construction which had been put upon them by Lord Coke.”'
p. 20. There is notone expression in tho Statute of Mo¬
nopolies the meaning of which had become bettor settled than
thnt of the words “ tirst inventor," ns may be scon from tho
quotation made from Dollaml's Case, ante p. 14. According
to Lord Lyndhuhst's remark in HomchiU Go. v. Heilson,
already quoted, “Tho first person who discloses tho inven¬
tion to the public is the first inventor." No reason rain be
suggested why this construction was not contemplated by
those who framed tho Act of 1880, and why it was not:
intended to be embodied in it ns inncli as the construction
upon another point adopted by Lord Coke. Such indeed
has been the import attached to the phrase by our own
courts. A large portion of the reasoning of the court in
Gaglcr v. Wilder is addressed to this very subject, and is
intended to show that it is not to be interpreted literally, but
is to bo applied properly to tho ono who brings n discovery
to tho knowledge of the public. How common it is to attach
this meaning to tho phrase may bo seen on recurring to tho
jxtrncts which have boon given from the decisions in Sey¬
mour v. Osborne , nnto p. 17, Washburn v. Ooultl, p. 18-11).
Agawam Co. v. Jordan, p. 19, Whitelg v. Swuyne, p. 10, anu
Singer v. Walmsey, p. 25. Anothor may be added oil
account of its especial pertinency from the decision of Judgo
Hall in Ransom, v. Mayor, 1 Fisli. 252. “If tlio plaintiff)
lid not1 uso reasonable diligence to perfect tlio invention
patented after tho idea of it was . first eoncoived, and
in tho tneantimo other persons not only conceived tho idea,
but porfeeted the invention, and practically applied- it to-
public uso before tlio invention of tho plaintiffs had boon'
bo far porfeeted that it could bo applied to practical use,
tlio plaintiffs’ patont is void, beenusethoy wore not tho first1
and originnl invontors of tho thing patented." p. 272/
Another thing which seems to lmvo had its influonco in lead¬
ing Judgo Stoiiy to his conclusion, is tho provision contained’
in tho Acts of 1798 and of 1881), for uotorinining contro-

REDUCING AN INVENTION TO PRACTICE. 31

vorsics bctwcon two conflicting applications. This introduced
into our system a feature undoubtedly now, though since
adopted to somo oxtont in thnt of Great Britain. But it wont
no further than to settle tho contest between two competitors
and to provide means for ascertaining which is entitled to’
the patont. It introduced no chnngc in tho principles upon
which priority of invention is to bo determined. Thnt is loft
to be ascertained by tlio sumo criteria ns in a trial at law
upon tlio validity of a patont. There is not n word in eitlior
of the statutes that countenances the idea that by a prior in¬
ventor is meant anything else than the person who shows
thnt lie is tlio man whom tho courts would adjudge to bo the
rightful, patentee; not a syllable that countenances tho sup¬
position thnt tho person intended is ho who hns conceived
the inveulion, but has never reduced it to pmetico, whntovor
progross lie has mndo short of that toward perfecting it.

■ Wo fail, therefore, to discover in what was alleged by
Judgo Story or in any other quarter, the slightest reason
for dispensing with- -.vlint is manifestly an essential featuroin
any well-regulated patont systom, mid one which lias been
commended to us by tho long oxporiouco of tho oldest ono
known, that of Great Britain. It is the system which our
legislature adopted, and thcro is no indication thnt they did
not intend to oinbmeo this prinuiplo as woll us tho rest. Tho
whole spirit of both seems to requiro that inducements should
be held out not merely to prosecute now inventions, but to
bring them before tho world. Tho rewards each holds out
are intended for these who givo their fellow-citizens tho fruits
of their ingenuity, and it is an entiro pervorsion to put such a
construction on our legislation as bestows thoso. rewards on
the man' who withholds thorn from his country.

In short, it defeats the principal object of requiring that’
tho formor embodiment of an mvontion shoulcl have been
put m use in order to invalidate n.pntent, which is thnt the
public should obtain a knowledge of it. Thnt such is tho
real object cannot bo reasonably doubted, and. should not bo
forgotton. But' to seouro it tho uso must, manifestly- be a
publievone. To requiro that it should have been in uso, yet
allow a. uso inprivato to satisfy tho requirement, involvos an
absurdity.

Somo sorupio has been expressed (by Dallas, J., for in-
stonco, in Hill v. Thompson, W. P. 0. 289) ns to tho poworof
the State to doprivo a man of tho privilege of using anow a
device which ho had discovered before tho patentee, and had
in actual uso. No ono ovor thought, howovor, of its boing
wrong to dony such a privilege to the porson who makes tho
same discovery afterward, though his discovory is an inde-

LETTERS

George B. Prescott

COMMISSIONER OF PATENTS,

Thomas A. "Edison

JPapfes and <$M*ampfcs

LETTERS OF GEORGE B. PRESCOTT TO THE
COMMISSIONER OF PATENTS.

New Yoke, June 2, 1876.

IIon. .T. M. Thacuer,

Commissioner of Patents.

Sir: The application of Thomas A. Edison for Let¬
ters Patent for improvements in Duplex Telegraphs,
Case No. 99, filed September 1, 1871, which, by your
decision of Mnrcli 20, 1876, when ready for issue will
be granted to Edison iind Prescott, assignees of Edison,
clearly and tnimislnkeably embraces tho invention for
which Letters Patent No. 162,033, of April 27, 1876,
were issued to Edison and Harrington.

In tho preliminary descriptions in tho two applica¬
tions (tho application of 1873 having been by consent
of the examiner amended in this respect May 20, 1876)
the object of the invention purports to be to enable
two operators to simultaneously send, or to effect the
simultaneous transmission of, two different dispatches
or signals over tho saino lino wire in tho same direc¬
tion. In Patent 102,638 this is stated to bo accom-
/$»hcd by tho transmission of positive and negative cur-
Kent* over tho lino to effect tho reeoption of ono mes¬
sage,- and tho increase and decrease of the strengths of
these currents cither positive or negative, to effect tho
reception of tho other message ; while in Case 99 tho
method is stated to bo “ to simultaneously soud over
ono wire in ono direction by reversal of a battery
current in ono instance, and increasing and decreasing
tho strength of the current in the other instance."

Tho third claim of Patent 102,683 is for " tho com¬
bination with tho main liao circuit of a reeoiving in¬
strument operated by changes in the polarity of the cur •

rent independently of tonsion, with another receiving
instrument operated by changes of tension, independent
of polarity,”

This is a broad and fundamental claim, legitimately
and properly belonging to Case 99.

The fact sought to be expressed by the terms of this
claim is identical with that recited in the first and
second olaiuis of Case 99, and the language employed
is in effect synonymous.

A receiving instrument operated hy "changes in the
polarity of the current," in the words of the third claim
of Patent 102,(139, is a description of the same tiling us
“a polarized magnet" which “ respomls to change of
polarity,” in the words of the second claim of Case 99.
So also “a receiving instrument, operated by changes of
tension,” in the words of the third claim of Patent
102,033, is a description of the same thing ns an “ ordi-
nary magnet” which " responds to an increase and de¬
cease of the current," in the words of the second claim :
of Case 99.

The records of the Patent Olliee show that the original
application in the ease or Patent No. 102,033, was filed
April 20, 1873, and was rejected May 3, 1378. A
second specification was filed May 22, 1873, upon
which action was suspended at the request of the attor¬
neys. Both of these specifications stale that the inven- ’
tion has for its object, the simultaneous transmission
two despatches or signals over the same line wire fi^A
x " opposite (/iVreObns.’vjP'N'cilher of them coiitain"any\
allusion whatever to the simultaneous Irnnsmissroii of
two despatches in the same dircction\^^2P.^

On the 20th of March, 1875 (the aimo daylimt you
decided that the Letters Patent upon application No.
99 should be - issued to Kdison and Prescott), a third
specification was filed in the suspended case, which was
thereupon allowed by' the Examiner, without further
objection, amendment, or alteration, so far as revealed i
by tho contonts of tho file.

In this now specification tho description and claims

were altered and enlarged for tho unmistakable purposo
of embracing tho invention sot forth in application
No. 99, belonging to Edison and Prescott. With this
view, tlio statement of the object of tho invention was
changed so as to include the simultaneous transmission
of two despatches in tho same direction, and in further¬
ance of this scheme another alteration was made in tho
description which more fully illustrates its character.
The drawing represents an apparatus for sending two\
messages simultaneously in opposite directions, but with I
which it is not possible to send two messages xmiuHmJ,
ncously in the same direction. To got over tills drift-
culty the new description states that “tho relay A B
may also be placed at a number of stations, if A or II
be dispensed with, and other devices applial to prevent the
mutilation of the signals hy change in the polarity of its
iron core.” That is to say, if one element of the com¬
bination shown in the drawing, and described and
claimed in the specification of Patent 192,033, bo en¬
tirely removed, and some other device, neither described
therein nor shown in the drawing, bo substituted there- j
for (for example, the only one thus far invented, the dc- ;
vice shown in Ctisc 99 belonging to Kdison and Prescott), j
then the apparatus would bo competent to perform the/
function claimed for it, viz.: the simultaneous trans¬
mission of, two despatches in the same direction. ,
vYs I have before shown, the fundamental principle
of the invention consists in _ tho combination of a re¬
coiling instrument operated by changes in the polarity
of tine current independent of its strenglh, with another
receiving instrument operated by changes in tho
strength of the current independent of its polarity.
The examiner’s letter of May 8d, 1878, rejecting the
original application of April 26th, 1873, as then pre¬
sented, shows conclusively that he understood the rela¬
tion of the separate elements of this combination to tho
slate or tho art at that time. Subsequently, Kdison
assigned- one-hnlf his right iu this invention to me, and
then filed a new application subject to this assignment,

known os Case 99, in which the fame elements were
again presented and properly claimed in combination.
While the latter application was pending in the Patent
Office, Georgo Harrington, with the connivance of Edi-
son, sought to deprive me of my rights in this invention,
A contest ensued, which resulted in your decision o[
March 20th, 1876, that tiic patents for Case 09, when
ready for issue, will he granted to Edison and Prescott
In utter disregard of botli the letter and tlio spirit of
this decision, tho Examiner subsequently allowed Edi¬
son's suspended application of April 20th, 1878, to
pass to issue, after having been amended by the inser¬
tion of a new claim, covering in tho broadest forms tho
invention which forms the subject, matter of Case 99.
This patont wns granted to Edison and Harrington by
virtue of an assignment executed and recorded several
days after yonr decision of Mareli 20th, 1876, and
moro than seven months after the assignment to me,
which you decided compelled the issue of the patent
for this invention to Edison and myself, nud not to
Edison and Harrington.

Tho great wrong thus done me, in violation of both '
tiie letter and the spirit of your decision, is, I presume,
beyond roinedy in tho Patent Office, and I must look
to the courts lor the recovery of my rights ; but there
mny bo other applications of Edison’s on filo in the
Patent Office, and, to guard against a repetition of the
error committed in issuing Patent No. 102,088, 1 linvo
prepared a digest of tho subject matter of the appiV.a-
lions which were assigned specifically to me, and of'tiio
caveats describing improvements upon the same, which
digest will bo forwarded to you in a fow days.

I havo the honor to be,

Vory respectfully,

Your ob’t servant,

Geohoe B. PjtEsoorr.,

I’liomas A. Edison, dated Aug. 19tli, 1874, and re-
lorded Aug. 29lli, 1874, Liber B. 18, p. 02, Transfers
if Patents ; together with a digest of the subject-matter
lontained in certain applications for Letters Patent and
invents, subsequently filed in the Patont Office by Mr.
Edison, in which, by virtue o( the terms of said assign-
nent, I linvo also nil interest.

The assignment of Edison to Prescott, of August
19th, 1874, conveys to the latter—

First. — " Certain improvements in duplex telegraphs,"
described in applications for Leltors Patent, numbered
94, 95, 90, 97, 98, 99 and 100.

Second. — “ Otl c j oi t l / I i t ! j ij!
Hie descriptions or which have been lodged with George
M. Phelps, for the purpose of models being construc¬
ted." said improvements being described m applica¬
tions numbers 111 nnd 112.

Third.— “An cqunl undivided intorcst in all Letters
Patont of the United Slates, or of any foreign countries,
which may bo granted for all or any of said inventions,
m-jpr any future improvements tlioreon made by cither
party, and or all oxtonsions nnd reissues of any such
Letters Patent."

In order that the patents for tlicso inventions may
be properly issued to Mr. Edison and myself, it seems
desirable to indicate clearly wlmt are the particular
inventions described in the abovo named applications,
and which of the inventions nnd doviccs described in
Edison’s subsequent oaveals nnd applications, are im¬
provements thereupon.

I deem it unnecessary to fully describe nil tlio inven¬
tions set forth in the nbove mentioned scries of applica¬
tions, and now on (lie at the Patent Office, and shall
refer only to such ns constitute the basis of subsequent
improvements.

The preliminary description of case 00 states that
“ the object of this invention is to enable two opera¬
tors to simultaneously send over one wire in one direc¬
tion by reversal of a battery current in one instance,
and increasing and decreasing the strength of the ear-
ront in the other instance.'' * * ' « * *

“By duplicating the pnrtshcrcin 'dcscribcd, fourtnins-
mitting operators and four receiving operators can
work simultaneously over one wire— two or each being
at eaoli end.” The above described invention, with the
subsequent improvements upon it, constitutes 'the quad¬
ruples telegraph.

Figure 1 shows the invention as perfected and em¬
ployed in actual service.

T' is a double current transmitter or pole-changer,
operated by an electro-magnet, local batierv and
finger key IC,, in a manner well understood. ’ 'I lie
ofitce of the transmitter T1 is simply to interchange the
poles of the main battery E1 with respect to the line and
ground wires, whonovor the koy K1 is depressed; or, in
other words, to reverse the polarity of Lhc current upon ■
the lino by reversing tlio poles of battery E‘. By tlio
use of properly arranged spring conlacU si sj, this is-
done without at any time interrupting the circuit.1
Thus tho movements of the transmitter T* cannot niter,
the strength of the current sent out to tho line, but only;
its polarity or direction. Tho second transmitter T* is
operated by a local circuit nnd koy Kr in the same’
manner. It is connected with tho battery wire 12, of
ffio transmitter T: in such a way that when tho kov
K is depressed the battery E, is enlarged by tho nddi- i
bon of a second battery Ea of about three times the mini-’
her orcolls, by moans of which addition it is enabled to
send a current to tho line of four times the original-

trength, but tho polarity of tho current with respect
o the lino of course still rcm-iins ns before, under
lontml of tho first transmitter T*.

At the other end of the line are the two receiving in-
itrnments It1 and JP. Jl* is a polarized relay with n
icrmnncnlly magnetic armature, which is deflected in
mo directi-m by positive, and in tho other by negn-
-ive currents, without reference to their slrougth. and
his rchiy eonscqueutly responds solely to the move-
ncnls of key K1, and o-jonttes tho soundor, S1, by a
ocal circuit from battery L1 in tho usual manner. Relay
If* is placed in the samo main circuit, nnd is provided
vitli a neutral or soft iron armature, which responds
■villi equal readiness to currents of either polarity, pro¬
dded they are strong enough to induce sufficient iniig-
letism in its cores to overcome the tension of the oppos-
ng armature-spring. The latter, however, is so ad-
listed that its retractile loreo exceeds the magnetic
itlraetioii induced hy the currentof the battery E1, but
s easily overpowered by that of the current from I'l* and
lia combined, which is about four times us great. There-
•ore, the relay IP responds only to the movements of
coy Ka and transmitter T3.

A dilliciiltv arises, however, in this connection, from
lie fact that when tho polarity of the current upon
,he line is revorsod, during tho time in which tho
trmnturc of IP is attracted to its poles, the armature
,v ill rail oil for an instant, owing I tin cc m in
jf’iall attractive foreo during tho timo when the
ihiinge of polarity is actually taking place, and which
would tend to confuse the signals if the soundor
was connected in the ordinary way. By the arrange-
ncitl shown in tho figure, tlio armature of tho rolny IP
nukes contact on its back stop, nnd thus oporntes a
iceoml local relay S by means of a local battery L.
L'his local relay, by its back stop, nnd a tfccond local
lottery La operates tho recoiving sounder Sa. Thus it
will ho understood that when relay IP attracts its anna-
ure tho local circuit of soundor Sa will bo closed by

tlio buck contact of 'local relay S; but if tho armature
of R3 falls oil' it must roach its back contact, and remain
there long enough to complete the circuit through the
local relay S, and operate it, before tho sounder S3 will
be ufl'cclcd. But the interval of no magnetism in the
relay R3, at the change of polarity, is too brief to per-
nut its armature to remain on its back contact long
cough to affect the local relay S, and thus tho signals
from K3 are properly responded to by tho movements
of sounder S3.

By placing tho two receiving instruments R and
>" die bridge wire of a •« Wheatstone balance," a
duplicating the entire apparatus at each end of the lii
the currents transmitted from either station do i
allect the receiving instruments at that station. Th
m figure 1 the keys K‘ and K3 are supposed to
at New York, and their movements are responded
only by the receiving relays R> and K3 at Bostc
ihc duplicate parts which arc not lettered operate
precisely the same manner, but in the opposite dire
t|on with respect to the line.

In applying tins system of qnadrii| lc\ t i s iss c
“I’0" bnes of considerable length, it was found that tl
interval of no magnetism i„ the receiving relay R
(winch, as above stated, hikes place at every reversal i
in the polarity of the line current), was greatly lengtl
cued by the action of the static discharge from til
line, so that the contrivance of the local relay S wi
not sufiicicnt to wholly overcome the difficulties nrisin

Adieostiitcriesistane.X-wnsUicrefii,

I'hiccd in the bridge-wire with the receiving inslru
n.o"ts,R n"d li3, and shunted with a condenser r, o
CO SKlcrahie capacity. Between the lower plate of th
condenser mid the junction of the bridge mid earth
unonThn ' dlt'°"'11 ‘•'lcc,ro‘l"ag"et, r was placed, actiaj
upon the armature lover of the relay R3, and in the earn'
curren, r° Cft'°Ct 10,'.tl,is 1UT«"gcme„t is, that when tin
Llv L I 0"0 |K!lnr,tjr .a,ns03> 1,10 condenser c immedi
ctcly discharges through tho magnet r. which nets non,

wo armature lever of relay Ra, ami rotnina it in posi-
•io" lor “ brief l'mo before the current of ibo opposite
rolarity arrives, anil thus serves to bridge over the iii-
orvnl of no magnetism between the currents of oppo-
ito polarity.

Snob is tbo invention which was conveyed by Edi-
on’s assignment, of the tilth of August, 187-1.

A ny method of sending two communications simul-
tncously ovor the same wire, cither in tbo same or op-
osito directions, or in both directions, one by changing
ic polarity of tbo current and tbo other by changing
io strength of tbo current, was new at the dnt° of
dison’s invention, and was therefore patentable in its
•oml sense, without reference to the particular devices
nployed to ellbct the necessary changes in tbo polarity
• in the strength of tbo current. This fundamental priti-
plo of the quadruple* system which has been derciibed I.
embraced in Application No. 00, which also includes '%/
o arrangement of the relay Jia, local relay S and 'J- 'Z
under Sa, above set forth. '

Application No. 112 describes certain improvements A.wr

the apparatus, for the purpose of equalizing tbo U
mpensntion Tor sU-uic discharge by means of gradu¬
al condensers, and a differont device for obviating tlio
ufusion of signals produced by the tendency of the
utral relay io open during the time the change of
hirily is hiking place.

Application No. 118 describes a method of coupling
gctlici two quadruples circuits, such as that ropre-
"ted in figure 1, by means of repeaters, so that direct
mmimiention may be carried on through much
sater distances than is possible in a single circuit.

Jinny or the caveats subsequently filed by Edison
3 modifications of the invention described in case 00
The following summary of such of these caveats as

Caveat No. 51, Hied December 0, 1874, shows a
method of qiindruplcx telegraphy, and is an improve¬
ment upon the duplex method described in application
00. In No. 00, two messages may he sent simultane- .
oiisly in the same direction, one by changes in the -
polarity and the other by changes in the strength of tho
current. The same thing is done in the present case,,
except that two polarized relays are employed in lieu
of one polarized and one neutral relay. This is, there¬
fore. an improvement on No. 00, the fundamental priri-.
ciple being the same but the details dillcrdnt. The '
two receiving instruments at each end of the line aro
placed in the bridge-wireof a Wheatstone balance, thus
rendering it possible to transmit four messages simul¬
taneously.

Caveat No. -52, tiled December 0, 1S7-1, also shows a ,
method of qnadruplex telegraphy, based on the duplex ,
principle described in No. 00, one message being trans¬
mitted by changes in the polarity, and the other by
changes in the strength of the currant. This caveat
contains an important improvement in the quadruples
apparatus, consisting of an extra mngiict acting upon
the armature-lever of the neutral relay, and so placed
as to receive the charge and discharge of a condenser
connected with the bridge-wire, for tho purpose of
holding the armature of the neutral relay while the re¬
versal of polarity is taking place.

Caveat No. 55, dnted January 18, 1875, describes
other improvements in the details ortho method of du¬
plex transmission shown in application No. 00, tho
fundamental principle remaining unchanged. It con- k
sists in an improved construction of the polarized relay,
and in tho employment of a “ secondary battery- " (a v
liquid condenser) to neutralize the static discharge from "
tho line. It also contains devices for repeating front ■
one line to another.

Caveat No. 58, dated January 18, 1875, describes ;

other improvements upon tho invention set forth in
application No. 90, and showing how it may bo adapted
to repeat messages from one circuit into another. This
improvement is embraced in application No. 118.

Caveat No. 57, dated Jan, 18, 1875, describes other
improvements upon the invention sot forth in applies-
tion No. 99. Instead of two separate relays, a singlo
rolay with two armatures is employed; one armature
being operated by changes of polarity and tho other
by changes of current. An induction coil is substi¬
tuted for tho condenser doscribod in caveat No. 52, for
the purpose of holding the neutral armature in placo
while the polarity is reversed. An induction coil is
also used to compensate for the static discharge of tho

Caveat No. 00, dated Jan. 18, 1875, describes fur¬
ther improvements upon the invention set forth in ap¬
plication No. 99. It shows improved methods of con¬
structing the polarized nnd neutral relays to render
them more easy of adjustment ; the application of a
condenser to the bridge wire, for the same purpose, but
in a different manner from that described in caveat No.
52 ; and the application of a repeating local relay to
the polarized receiving relay. It also describes a dif¬
ferent method of transmitting alternate positive and r.cg- •
ntive currents by one key, and increasing and decreas¬
ing tho potential or strength of current by another key
at the same station.

It will readily he perceived that all the in ventions
and devices described in applications Nos. 112 .ind 113,
and in caveats Nos. 51, 52, 55, 58, 57 nnd GO, are mod¬
ifications of, or improvements upon, the invention de¬
scribed ill application No. 99, which contains tho fun¬
damental principle of tho qundruplox apparatus. And
I respectfully submit that when Mr. Edison conveyed
to me one-half interest in each nnd all of theso inven¬
tions, he constituted tno irrevocably the owner of such

one-half; and tlmt iho subsequent application Tor a
patent on the amended specification, filed in tho office-
March 20, 1876, and tho passing by the Examiner of:
the same (thus procuring tho issue of patent No...
162,083 to Edison and Harrington) was manifestly in
derogation of my rights, and was surreptitiously dis-
obedient of your decision of March 20, 1876; that the
patents for these inventions, when issued, should bo ,
issued to Edison and myself.

I have tho honor to be, very respectfully, your obe-

GKOIK1K B. PltKSCOTT.

.New York, Deccmler 18(7i, 1876,
Hon. R. Hollaed Duell,

Commissioner of Patents.

Sin — I desire to call your attention to certain official
acts of Mr. Z. F. Wilber, a primary examiner in tbo
United States Patent Office, in connection witli tbo
matters sot forth in tlio following statement:

On tlio 10th of August, 1874, Thomas A. Edison,
by an assignment recorded August 20, 1874, in Liber
R 18, pngo 02 of Transfers of Patents, convoyed to mo
a half interest in his inventions in Duplex Telegraphs,
set forth in his applications for patents therefor, num¬
bered 04, 05, 06, 07, 08, 00 and 100, and in certain
other of his inventions in duplex telegraphy, the de¬
scriptions of which were lodged with George M. Phelps
for tlio purpose of having models constructed to accom¬
pany applications for patents therefor.

While tho nbovo named applications were ponding
in tho Patent Office, on tho 28d of January, 1875, Mr.
George Harrington addressed a petition to tlio Commis¬
sioner of Patents, asking that letters patent upon tho
aforesaid applications should bo granted to Thomas A.
Edison and himself, as assignees of Edison, under nn
alleged assignment dated April 4th, 1871, and rccordod
iu tho Patent Office May Otli, 1871, in Liber U 18, page
1112, of Transfers of Patents.

On the same day Mr. Thomas A. Edison addressed a
letter to tho Commissioner of Patents, without my
knowledge or consent, withdrawing his request for tho
issue of patents upon these applications to Edison and
Prescott, and requesting that they bo issued to Hnrring-
ton and Edison.

Thereupon tho Commissioner of Patents instituted
nn inquiry into the scope of tho two assignments re¬
ferred to, pending which lie directed that tho applica¬
tions should bo transmitted to him. Ho nlso directed
Mr. Wilber, the examiner of this class of inventions, to

/? 7 5”

report to him the meaning of the expression “ fast tele¬
graphy " contained in the assignment to Harrington;
mid therein used to define tbo character of the ittven- .
tions convoyed.

On tlio 20tli of January, 1875, Mr. Wilber made his
report to the Commissioner of Patents, stating substan¬
tially that fast telegraphy included duplex and quad-
rttplcx systems of telegraphy, and so covered the in¬
ventions which had been specifically assigned to my¬
self.

This construction of the Ilnrrington and Edison in¬
strument of April 4, 1871, was contested by mo upon,
a hearing before tho then Commissioner of Patents,
and niter full and elaborate arguments by the respeo-.
tivo counsel on both sides, tho Commissioner decided
on March 20, 1876 [see Official Gazelle , vol. 7, pager
423], that the patents for the inventions herein referred;
to when ready for issue should be granted to Edison;
and Prescott, and not to Edison and Harrington, thus
completely overruling the position taken by Wilber in
his report.

On the very same day that the Commissioner made
this decision in my favor, namely, March 20, 1876,
Thomas A. Edison revived nil old application, desig¬
nated by him as Case H (which had been filed April 20, ■
1S73, and rejected by Wilber May 8d, 1S73), by tho
filing of amended specifications niul claims which were
intended to embrace, and did in fact embrace, the most
important invention contained in tho applications as¬
signed to me.

This old application, thus amended so ns to. include
one of tho most important inventions which the Com¬
missioner of Patents had just decided should be issued •
to Edison and Prescott, was llirco dnys after (his do- .
cision assigned to Edison nnd Harrington, y.with the
ovidont nnd unmistnkcnblo intent to defraud mo of
my rights.

Immediately alter tho Commissioner lmd rendered his
decision oi March'20, Edison and Harrington applied

to the Secretary of tho Interior to withhold his signa¬
ture from tho patonts which should bo granted by tho
Commissioner to Edison and Prescott This application
was ontortained by tho Secretary of the Interior, nnd
tho subject was fully argued boforo him by tho respec¬
tive counsel. Ponding his decision,' which up to this
timo has not been promulgated, all action upon these
oases was directed to bo suspended.

In utter disregard of these facts, however, and whilo
tho applications, the titles to which woro in dispute,
were in the hands of tho Secretary or tho Interior, Mr.
Wilber, on tho 24th of April, 1875, allowed tho patent
upon tho rovived and amended application above re¬
ferred to, signed the file, and delivered it for issuo by
tho usual channel in tho Patent Ollico.

Thus, in utter disregard of both tho letter and tho
spirit of the Commissioner's decision of March 20th,
1876, and in wilful disobedieueo of tho orders for tho
suspension of all action upon tho applications for.tboso
inventions whilo under tiio consideration of the Secre¬
tary of tho Interior, Mr. Wilber allowed Edison s
suspended application of April 20th, 1873, to pass to
issuo, after having been amended by tho insertion of a
new claim, covering in the broadest terms the invention
which forms tho subject matter of caso 99, which was
assignod to Edison nnd Prescott.

Bv this procedure, Mr. Wilber causod a patent, con¬
veying the tillo to tho very invention which was in
dispute to bo granted to tho parties, to whom tho Com¬
missioner of Patonts had previously decided that it was
not to be granted j thus virtually usurping tho official
functions, not only of tho Commissioner, but oven of
the Secretary of tho Intorior, in taking upon himself
to decide ns to whom this invention was to bo awarded.

Tho Commissioner’s inquiry into tho title to caso 99
was practically an inquiry into tho titlo to tho inven¬
tion claimed in case H. Wilbcr himself in Ins opinion
of Jhnunry 29, put both enses on the samo footing; yet
Wilber, in violation and neglect of his plain, duty in

the premises! did not direct tbo attention of llio Com¬
missioner of Patents to tlio character of tlio invention
sot forth in ease H, nor to the fact that a now and ex¬
panded claim had been filed therein covering the very
invention claimed in case 00. It was also tlio duly of
tlio examiner to notify tlio applicants for ease 00 of tlio
existence of a prior application embodying tbo snmo in-
vention ; but, ns the file of Cnso 00 shows, Wilber did
not give that information. After the Commissioner's
decision was announced, Wilber having allowed this
patent embodying one of tbo inventions which the
Commissioner had decided belonged to Edison and
myself, ns assignees of Edison, still failed to inform tlio
Commissioner of his action, and consequently tbo patent
upon Cnso IT, for tbo invention described in Case 00
(being patont No. 102, G83, dated April 27th, 1876),
was issued to Edison and Harrington.

Wilber, as the examiner, was the only person in
the Patont Oilice who could identify' the invention for
which this patent on Case II was granted, and it will
til us bo seen that Wilber not only failed to carryout
the direction of tlio Commissioner of Pulents contained •
in his decision of March 20, 1876, that the patent for ■
this invention, when issued, should be issued to Edison,
and myself, but indicated in some way that it was a
patent to be issued to Edison and Harrington, whereby
it was wrongfully so issued.

I, therefore, clinrgo upon tbo foregoing facts, in con¬
nection with tbo grant of Letters Patent of tlio United
States, 102,033 :

First — That Mr. Wilber wilfully' ami improperly
neglected to inform the Commissioner ol Patents of tbo
cxislenco in tbo Patent Offico of n prior application of
Thomas A. Edison for n patent embodying substan¬
tially tbo same invention ns that described and claimed
in Edison’s application, designated Case 00, although ho •
well know that tlio Commissioner was ongnged in
inquiring into tbo question of the ownership of the said

Secondly — That ho wilfully and improperly neglected
.o notify tho applicants for Cnso 00 that an older appli¬
cation for a patont for substantially tho snmo invention
is that described and claimed in Case 00 was on filo
uul in his possession ns tho examiner of tbo class of
inventions to which this application belonged,

Thirdly — That, well knowing the soopo of tlio Com¬
missioner's inquiry and decision, and well knowing
that tho invention described in Cnso 00 had boon
assigned to Edison and Prescott, Wilber wilfully neg¬
lected to inform tbo Commissioner that Edison’s old
application, filed April 20, 1878, and rejected by him
(Wilber) May 8, 1873, bad been revived by tlio filing
on Mnrcli 20, 1876, of nn amendment covering the
identical invention described in Caso 00, nnd which tlio
Commissioner bail decided belonged to Edison and my¬
self.

Fourthly — That, well knowing the force nnd effect ol
tbo Commissioner’s decision and order made March 20,
1876, directing that tlio pntents for tbo inventions
described in certain cases, among them Caso 99, when
issued, should bo issued to Edison and Prescott, ns
assignees of Edison, Wilber nevertheless wilfully neg
lected to inform tbo Commissioner of tho fuot that
Edison’s aforesaid application, amended March 20
1S76, was for substantially tlio snmo invention ns tbn
described and claimed in Case 09.

Fifthly — That Wilber, well knowing that, by tin
routine of the Patent Ofiice, Edison’s amended npplicn
' tion, onco signed and delivered by him, would go ti
patent without attracting further notice, did, on tin
24th of April, 1876, sign tho said filo and delivor tin
snmo for issue by tlio usual channel, nolwithstnndin!
tho fact that he (Wilber) know that the invention d(
scribed and claimed in tho said application was in sut
stance identical with the invention described an
claimed in Case 99. . . „ .

. I also dcsiro to call your attention to the follow in

Aa soon ns possible nflor rooming notice of the issuoof
tlio letters patent 102,083, nbovo roferrecl to, I addressed
to tlio Commissioner of Pntonts two letters, copies of
which will bo found in tlio onclosed pamphlet. In:
my letter, on page 0, 1 referred spcciflcnlly to tbo inven¬
tions assigned to mo.by Edison and embraced in tlio'
Commissioner’s decision of March 20, 1875, ns follows:

Tho assignment of Edison to Prescott of August
19th, 1871, conveys to the latter—

First "Certain improvements in duplex tele¬
graphs ” described in applications for letters patent,
numbored 94, 95, 90, 97, 98, 99 and 100.

Suomi—'1 Otiior improvements in duplex telegraphs,
tho descriptions of which linvo been lodged with Geo.
M. Phelps, for tho purposoof models being constructed,"
said improvements being described in applications
numbers 111 and 112.

Case 111 had boon delivered by Wilbor to the Com¬
missioner of Patou ts, nnd had been retained by tho Com¬
missioner during tho time that ho was engaged in tho
inquiry into tlio controversy between IEnrriiigton nnd
myself upon the question of title.

Tho Commissioner’s decision of March 20th covered
tlio inventions for which models lmd boon mndc by
Georgo M. Phelps. It was well known to Wilber that
Phelps made tlio model filed with Case 111, having •
been specially informed of the fact by Georgo M-
Phelps, .Tr,, the clerk or foreman of his father, Georgo
M. Phelps, under whoso supervision the models wero •
made, and who visited Washington for tlio express
Purpose of identifying these models with Cases 111 and
112, nnd who, under the authority of tlio Commissioner'
nnd incompnny with Mr. Wilbor, visited tho machinist’s
room in tho basement of tho Patent Odico and picked
out tlio models mndo by him, nnd nftcrwnrds made an •
affidavit in which ho deposed that bo identified tlio
models accompanying Cases 111 nnd 112 ns boitig two
of tho models mndo under his supervision, and handed
tho affidavit to Mr. Wilber.

• Caso 111 was not specified iu tho application of
Edison nnd Harrington ns ono of the cases upou which
.they requested tho Seerotary to withhold his signature,
.but tho Into Commissioner of Pntonls, ns I am informed
by him, directed Wilber not to issuo pntonts upon any
of tho cases which had boon before him, 111 being onu
of them, until tho determination of tlio application
mndo to tho Seerotary of tho Interior. Yet Caso 111
, was patented October 6, 1876, and the loiters patent
therefor, No. 108,886 were issued to Thomas A. Edison,
instead of to Edison nnd myself, ns assignees, ns tho
Commissioner of Patents had ordered. Tlio filo of
Cnso 111 shows that tho application wns received in tlio
Patent Offico on January 20, 1875 ; that tlio first notion
upon it wns on March 25, 1875 (fivo days nflor tho dnto
j of tho Commissioner’s decision), nnd that ou tlio 27th of
..March Wilbor allowed tbo application.

The noxt notion in the case wns on tho 80th of Sop
lumber, 1876, when Wilber again oxaminod nnd
allowed tho application, Bigncd tho filo, and sent it out
for issuo through tho usual channel. Ou tlio day tliut
Wilber did this tlio Into Commissioner's torm of offioo
expired.

Wilber not only did not inform tho Commissioner of
Patents Hint ho bnd allowed Caso 111, but deliberately
disoboyed the order of tbo Into Commissioner in sign¬
ing tho filo nnd Bonding it out for issue.

I thcroforo charge iu this connection :

First — That Wilber, well knowing that Edison’s ap¬
plication for a pntont dosignntcd by Edison ns cnso 111,

* covered ono of tho inventions conveyed by Edison to
himself and Georgo 15. Proscott, assignees, novortholoss,
wilfully and improperly nbstninod from notifying tho
Commissioner of Patents, that the snid application lmd
been allowed on March 27th, 1875, and lmd been re¬
examined nnd again nllowcd by him, tho said Wilber,
on tho 80th of September, 1876.

. Secondly — That Wilbor, woll knowing that Edison’s
•Caso 111 was ono of tho applications affected by tho

Commissioner's order or March 20, 1876, niul well know-
ing that the patent for' the invention described in the
said ease, when issued, was by the order of the Commis¬
sioner to bo issued to Edison and Prescott, ns assignee^
nevertheless, wilfully abstained from informing the
dorks and other officers of the Patent Office having in
shargo tho issue of patents, that be hnd passed the said
Case 111, and that it was one of the cases governed by
die Conmtisssioncr’s decision.

Thirdly — That Wilber, w'ell knowing that by tho
routine of the 1’atont Offico tho said Caso 111, when
ligned by him, would go to patent without attracting
.urtlier notice, in utter disregard and violation of tho
>rdcr of the Commissioner of Pntcnts, did sign tho filo
>f the said caso and transmit it for issue through tho
isual chnnnol, whoroby tho said Caso 111 was patented
October 6, 1870, the letters patent therefor, No. 108,383,
icing granted to Thomas A. Edison instead of to
L’liomns A. Edison and George 11. Prescott, assignees,
s tho Commissioner of Pateuts had ordered.

Fourthly — That Wilber, well knowing that Edison’s
ipplination, designated Case 111, covered one of tho in-
motions assigned to Edison nnd Prescott, nnd having
iropcrly transmitted or delivered the filo ami contents
if Case 111 to tho Commissioner in person, as one of
he eases in controversy, in responso to tho order of tho
Commissioner to transmit to him all the cases in ques-
ion for examination of tho title; nevertheless, oh
September 80, 1876, tho dny that Commissioner
lhachcr’s term of offico expired, passed Case 111. and

fully issued to Edison alone.

Fifthly — That Wilber wilfully abstained 1
information to tho proper nuthorities of i
Offico in regard to Caso 111, and thereby
Letters Patent 188,886 to bo wrongfully

Thomas A.. Edison when ho know that by a lottor to
tho Commissioner of Pateuts, dated March 26, 1876,
from Georgo B. Prescott's counsel, Messrs. Porter,
Lowroy, Sorcn and Stone, tho authorities of tho Patent
Office had boon explicitly informed that Caso 111 was
one of the oases in wliioh Prescott claimed an interest.

Sixthly— That Wilber wilfully permitted Caso 111 to
go to patent, nnd to bo wrongfully issued to Tliomae
A. Edison, well knowing that tho Commissioner of
Patents hnd boon requested to permit Mr. Phelps to ex¬
amine tho models of Caso 111, and other oases, and well
knowing that after such examination Mr. Phelps had
made affidavit tlint he, Phelps, recognized tho model of
Caso til as a model made by him for Edison nnd Pres¬
cott, and well knowing that tho Commissioner’s decision
of March 20th, 1875, ordered that tho patonts in tho
cases so recognized by Phelps, should bo .ssued to
Edison and Prescott.

In these acts of Mr. Wilbor there are, I respectfully
submit, grave offences against tho honor nnd dignity of
the .Patent Office, and gross violation of my rights and
or the rights of tho public. I am interested in n largo
number of applications for patonts for tho same class of
inventions as those hero referred to, which are now
pending in the Patent Offico, and I respectfully sub¬
mit that my interests in thoso ensos are soriously im¬
perilled ir the power to dispose of them, ns has boon
done in the cases now brought to your attention, is
longer confided to Mr. Wilbor. And I further sug¬
gest that a duo regard to the rights of tho public, and
especially of thoso having business with that branch of
the Patent Offico now under tho chnrgo of Mr. Wilbor,
demands that ho bo romoved from tho place wliioh he
now holds.

I have tho honor to bo your obediont sorvant,

George B. Prescott.

BEFORE A COMMISSION

COMMISSIONER OF PATENTS,

IN THE MATTER

Charge .s preferred by GEORGE li. PRESCOTT against
Z. F, WILBUR, a Principal Examiner in the United
States Patent Office.

BRIEF OF GEORGE B. PRESCOTT.

BEFORE

oo35vC3s<rissxojsr

(Kjonnubsimm1 of ptcufs.

In tlio matter of tho charges or
Grioifnu B. Prescott
against

Examiner AVilrer.

BRIEF OF GEORGE B. PRESCOTT.

In tlio matter or tho grant of Letters Patent or tho United
States, Ho. IG2,G33, or case It.

1. Inasmuch ns a like jintcntnblo invention was shown
or described in each of the two applications designated as
caso H and easo 89, which were both ponding in tlio Patent
Ofllco at tlio same time, which invention wns claimed in tlio
later application [caso 99], though not specifically claimed
in tho earlier ono [caso II], a ly/msi-intcrfercnce existed
• between tho two applications, upon which tho Examiner

wns bound by the rules and practice of tho Ofllco to take
proper action.

2. Tho application flrst tiled [caso II], having, subse¬
quently to tho tiling of tlio second application [ease 99], been

amended by tho insertion in tlie specification of now matter,
and of a now claim, synonymous in its terms with omiot
tho existing claims of tho second application, so tlmt each
11 1 t emit cli like claim lor tho same patentable
subject matter, the Examiner was bound by tho rules nail
practice of the Ofllco to notify tho applicants in both eases,
and to compel tho withdrawal or the said claim from the
lator application, as a necessary pre-requisite to its insertion
in tho earlier one.

3. Tho Commissioner of Patents having ofllcially decided
that tho invention shown, described, and claimed in appli¬
cation No. 80 belonged to Edison and Prescott, and having
afterwards made special inquiry of tho Examiner whether
enso II was or was not embraced within that decision, the

Examiner was in duty bound to inform the Co . .

that tho snme subject matter was cluimcd in case II that
was claimed in case 00. ; . F

1.— In the case under consideration two sepamtu applica¬
tions for letters patent for duplex tolcgmplis wero tiled by
tho same inventor, Edison. The ilrst application [caso^j
was tiled by Jliiun & Co., nttornoys of record, on the 20th
of April, 1873, and the second application [case 00] by

soon, in application No. Oft. But case II lmcl already boon
on (lie in tlie olllco sixteen months, and consequently had a
prima facie right to tlio broad claim ns expressed in claim

The first ol' theso claims, although objectionable in form,
is clearly intended to cover the combination of apparatus
described, whereby two distinut messages may bo trans¬
mitted over ono wire, in the mine direction and at the sanio
time ; in other words, it is a claim limited to certain devices
arranged to'produco a specific result, via: duplex trans¬
mission in the sumo dircctftm. Tlio second claim, on the
contrary, is a brand claim, iii terms expressly covering tbo
combinatioii specified whoa applied ton duplex telegraph,
that is, when employed to produce, in any form, tlio result
technically termed duplex telegraphy, i. c., tlio siimiltniicons
transmission of two independent sets of signals upon ono
lire. '

There can bo no doubt ns to wlint this claim was in-
ended to cover. But Mr. Wilber goes into a lengthy
irgumont, apparently for tlio purpose of proving that the
-wo inventions uro entirely distinct, and that no claim,
lowovcr brand, in ono case, could interfore in the slightest
logreo with a claim for exactly the sanio tiling in tlio other
msc, becauso the effect produced is ono species of duplex
elcgraphy in ono case, and another species of duplex tele-
pnpliy in the other ease. If tlio combination by which
hose olfccts are produced in each case possessed no novelty
n itself, then his reasoning would have some force. But
t scarcely requires moro than an elementary knowledge oi
ho principles of pntont law, in order to understand that if
luplox telegraphy in either of its two forms is tmpnble oi
icing effected by tlio uso of tlio sumo combination of doviccs
ir elements, a combination in itself novel, then tlio applies-
ion in which priority is proven is most unquestionably on-
itled to a claim for tlmt combination brand enough in its
copo to cover its application to duplex tclogiiiphy in any
brm; aswollas to additional claims i if nuioro restricted
hnmetor, covering tlio particular nrrnngomonls which are
mployed in that particular branch of duplox tologrhphy.
low this is precisely wlint actually was claimed, as wo have

>licntions Y Tlio now specification in ease 11 stales that
invention 1ms for its object “ the simultaneous transmit ■
i of two different despatches or signals over the Mine tine
■efrom opposito directions, or ill the name direction;” mid
t “ tlio invention consists in the transmission of posihte
l negative currents over the tine to effect the reception of one
mage, and tlio incrcane and dccreana of the strength of that
rents , either positive or negative, to effect the. reception oj
other message

laving thus distinctly stated Unit tlio invention in easo
consists in tlio nso of tlio very coinliinalioii described
1 claimed in case 9!), Edison then proceeds to claim it in
blondest possible manner in easo IT, ns follows:
f ’ho combination, with the main line circuit, of a rmicinj
'ruincnt operated by changes in the polarity of the current
cpendcntly of tension, with another receiving instrument
rated by changes of tension independent of polarity, incam
changing the polarity of the current, and means of changing
tension of the current, substantially as and for the purpoa
cijied.

Tow, when wo coniparo this claim with tlio second chuni
:nso 99, wo iiiul that tlio language of the two claims is it
ict synonymous.

\. receiving instrument operated by “changes in the polar
of the current,” in tlio words of tlio third claim of till
ended ease U, is a description of the same thing as i
olari/.ed magnet” which “ responds to change of polarity,'
tlio words of tlio second claim of case 99. So, also, “i
civing instrument operated by changes of tension,” in tin
rds of tlio third olnim of case 11, is a description of I In
no thing as an “ ordinary magnet” which “ responds lo ai
reuse and decrease of the current.1’ in tho words of tin
:ond claim of easo 99. . .

L'hus, alter tlio filing of tho amendment of March 20th
iro were two sopnmto applications in tho hands of tin
nminer. Tho title of tho invention is tlio same in eacl
io; tho object of tlio invention in each, ns sot forth in tin
laniblo of thu respective specifications, is tho same; tin
•entiou itself is stated to consist in tho same combination
[l employed in cncli easo for tho same purpose, lly lh
ug of this unloaded specification, therefore, tho two nppll

“instructions, would lmvo to bo , modi fled, tlmt J would
“ hold, only tlioso referral to in his decision, or identiOed
“ ns being embrnced within it I told him that I hail never
“ eonsideral this am an being for any invention claimed in
“ the Edinon-Prcncott canen, nml tlmt it lmd been (lied a year

and a lialf beforo the Prescott assignment. Ho then nil*

“ vised mo to send it forward immediately, and avoid fur-
“ thcr coiinilamt. I hereupon I returned to my' room, went
“ over tlio enso (somowlmt imrricdly), and sent it forward
“ that same afternoon.”

Now, it will bo observed, in the first place, tlmt the pre¬
tence of Sorrell’s telegram containing a complaint is with-.;:
out any foundation in fact. Tho telegram speaks for itself)
and in his account of tlio interview in his letter to Wilber,
Commissioner Timelier says not a word about a “ conn
plaint.” Tlio excuse of a “complaint” is purely an inven¬
tion of Mr. Wilber’s. Ho well know Unit Sorrell was not
the attorney in the enso ; tlmt ho had no sort of connection
with it ; and tlio fact of his asking to huvb it issual, under
existing circumstances, was in itself a suspicious occur¬
rence. But Mr. Wilber carefully conceals this fact from
tlio Commissioner, if ho did not actually mislead him in the
mnttor; and then, as tlio Commissioner himself says, “Ill
“ reply, you (Wilber) stated that tho application amid
“ not imnniblg bo brought under tlio operation of that tie-
“ cision, an it lean for different nnbjcet mattern,” etc. Now, is
it to bo supposed for one moment, that tlio Commissioner,
in tho face of his recent decision, would have advised the .
issue of tlmt patent without farther cxiimiimtion, if ho hail
known that tho nubjeet matter was tlio same, and not
different, both being for duplex telcgrapliB, and that in each
of tho two applications tlio invention purported to be ccr- :
tain means for duplex transmission in tho sumo direction,
these means being tho sanio combination in each, and con¬
taining claims precisely synonymous, unless ho lmd been
deliberately ami intentionally deceived by Mr. Wilbert.:
Tho Commissioner must depend upon tho good faith of his
subordinates in such matters. It is a physical impossi¬
bility for him to personally investigate every enso of this
kind. Ho appears to lmvo tnkon every reasonable precau¬
tion to guard against orror, by questioning tho Examiner

that ofllcc, tho course was loft clour for issuing a patent for
tlio iurention embodied ill it to Edison nml Harrington, by.
menus of the recently amended application in case U, pro."
vided Wilber could deceive the Commissioner into tbs'*
belief tlmt case H was not one of the cases affected in any
way by Ids recent deuisiou.

A day or two before Harrington's appeal to the Secretary
of the Interior, Wilber suys the Commissioner “asked mo
“ what course I was taking in tho Edison eases boforemo. I
“ told him I had cleaned up those which hud been awaiting
“action, rejected some and passed some. Jle said I had
“belter not tet any go out until Mr. Prescott hail hail an oppor-
“ t unity to identify such an he claimed, anil which were not
“ identified in the assignment. I asked him if tho automntio
“cases, about which there could bo no possible dispute;

“ should bo held up too. lie said no, that they could go
“ right ahead, but to kohl others."

Alluding to case II subsequently, Wilber says ho “'looked
“over tho case in turn, thought it was probably all right,

“ and then, in pursuance of the wishes expressed by tho:
“Commissioner, lot it lay.”

As case H was not an antomntic case, how could Wilber,
issuo it in tho face of tho above order 1 It will bo seen that;
bo was equal to tho emergency. After tho Secretary had
tied up 00, everything remnins quiet foru few weeks, whenn
favorable opportunity occurs, and the whole plot being cun¬
ningly arranged, the scheme is successfully exploited.

Edison goes to Mr. Sorrell’s ofllco in Now York, in his
absence, and gots Mr. Sorrell’s oillco manager to telegraph
to tho Commissioner about case II— over tlio signature of
Mr. Sorroll, who had nothing to do with the case. (Why not
tclcgruidi over his own name, or of his authorized attorneys;
Munn & Co. t) Tho telegram is referred to Wilber, and lie
tells tho Commissioner that tho application roferred to by
Mr. Sorroll could not possibly be brought under tho opera¬
tion of that decision, us it was for different subject matters;
thut ho lmd never considered this case ns being for any
invention claimed in tho Edison-Prcscott cases, and that it
had been filed' nearly a year and a half, before tho l’rcscolt ■
assignment; and in tho belief that Wilber’s ' statement was V
trao, tho Commissioner advised him to issuo it. Wilber is
in such haste to issuo it, although it hns been lying quiotly

in his (llos for two years, that ho cannot stop to read it
through, but sends it forward that samo afternoon. Ono
of Harrington’s attorneys, not of record in tho case (Chan,
dlor), is ready with tho final fee; it is promptly paid, and
tho whole nffiiir is finished up during a single day.

Mr. Wilber’s defence of his action in regard to cases H
and 119, consists in attempting to show— first, that tho two
inventions are not. tho samo, and, second, that if they aro
tlio same, ho did not know or bolievo that such was tho

As beforo stated, tho real question is not whether tlio
two inventions aro tho same, but whether tlio samo patent-
able combination is shown, described, and claimed in each
of tho two applications, it is scarcely necessary after all
that hns boon said to dwell at length on this point. .

Moth tho applications in question describe substantially
tlio same elements combined together to produce tho samo
result, this result being tho simultaneous nud independent
transmission of two despatches upon ono wire. No attempt
has been made to show that thin result, when produced by
means of this combination, is not now, nor can it bo domed
that the result is described as being produced bj substan¬
tially the samo combination in both cases. Simultaneous
double transmission, technically termed duplex telegraphy,
is of two kinds, namely, transmission in opposite direc¬
tions and transmission in tho same direction, i hose aro
two forms of one thing, ono form being just as much a
duple v telegraph as the other, no more, no less. Numerous
examples of each of these forms ol duplex telegraphs wue
already known at tho date or Edison s first application.
Some of these combinations (for example, Bossohn . s) mo so
organized as to be capable of simultaneous double trans-
mission either in opposite directions or in tho
lion, by simply changing tho order ol succession of the
diilJreut parts of the apparatus, viz., tlio two transmitting
kevs and the two receiving instruments upon the lino, a
change requiring the exercise of nothing beyond ordinary
skill and judgment, us distinguished tom ^ intcn on.
Others are organized for tho special purpose ot In plox
transmission in opposite directions, .making use of amigos
which aro not available for ti i si i sio i tho_8a no nroc.
tion, and others again aro exactly tho reverse of this, being

organized for the special purpose of duplox transmission in
tho sumo direction, making use of devices which are not
nvailnhlo for transmission in opposite ilircctions.

It is clear, therefore, that tit is combination is patentable
ns n combination by menus of which duplex transmis¬
sion in nny form may be eil’ectcd, and tills without, refer¬
ence to the mere geographical distribution of thu different
part of tho apparatus upon the line. On tho contrary, tho
great vnluo of tho combination, which forms the gistof tlio
invention both in case II and case Off, consists in the very
fact that it is callable of being employed for duplex tele-:,
grapliy under so many different conditions, whereas nearly
every ono of the previously invented combinations were of
limited application, and therefore of far less practical value
than this.

The fact that tho same patcntablo invention is shown,
described and claimed in both these eases, has been shown '
boyoml question by tho testimony of Mr. Prescott and Mr,-
Pope. In addition to this, the attention or the committee:
is invited to tho opinion of Mr. Moses G. Farmer, a gen-p
tlomnn who bears a deservedly high reputation as an
export in cases of this kind.

Mr. Farmer’s opinion was forwnrdcd in answer to a tele-:
graphic despatch ; lie had no opportunity to consult with
others, and no information us to what tho opinion of others
upon tho subject might be. The opinion is ns follows :
Geo. B. Prescott, Esq.

Sir — In your telegram of Feb. 10th, you say:

“ Please give mo your opinion ns to whether the inven¬
tion shown, described, or clnimcd in Edison’s case !I9, em¬
braces the invention shown, described or elnimcd in uny:
of Edison’s applications in caso II; nnd whether the com-:
bination described in tho third claim in ease II, does, or
docs not, cover an essential elumcnt or feature of the
invention shown in case !)!>t”

In reply, I bog to submit tho following statement as pre¬
senting my views of tho matters above referred to :

In the first plneo, tlicso two inventions, viz., ense H and
caso 09, have a common object; it is this: to puss simul¬
taneously two signals instead of one, over a singlo wire
which connects two distant stntions.

Tills otid 1ms often boon attained boforo in various ways
and by the use of different means: in some cases by tho
use of currents varying only in strength but not in direc¬
tion ; in other eases, by tho use of currents varying simul¬
taneously both in strength and direction.

In these two inventions, however, means aro so em¬
ployed that ono opomtor makes use of currents varying in.
strength only ; wliilo tho other operator mnkos use of cur¬
rents varying solely in direction.

Tho means employed to produce these changes in current
strength and currant direction, so far ns these functions are
concerned, are well known electrical equivalents, although
tho derails of tho apparatus employed to accomplish tho .
desired ends differ in the two eases, and for this reason :

In case II, the object is to pass tho two simultaneous sig¬
nals in opposite directions over tho wire ; wliilo in caso 00
tho desired object is to .pass tho two simultaneous signals
over tho wire in the snmo direction.

This fact necessitates a modilicatiou of thu devices em¬
ployed. In case 09 the apparatus used for reversing tho
direction of tho current simply interchanges tho connec¬
tions of the battery poles between tho line and earth wires,
using only ono battery for this purpose.

lii case H it is necessary to provide twice ns much bat¬
tery ns in caso although only ono half of it is used at
any ono time, so that tho virtual strength of cun-put on
tho lino is, at any time, equal in case II to what it is m caso
99, so fur as tho action of tho reversing key nflccts it.

In caso If tho middlo of tho main battery is in permanent
connection with tho main line, wliilo its two extreme poles
are put into nltomnto connection with the earth pinto by
the notion of the reversing key ; and it so happens that, by
•the action of this key, alternate positive and negative cur¬
rents are sent into tho line, and that, too, equally ns well ns
i„ case 99, where the two end connections of the main bat¬
tery with tho earth and lino aro nltcrmitoly interchanged
by the action of tho reversing koy. ,

Next, with reference to the action ot the koy which
changes tho strength of the current.

in case H this key K' by its action simply introduces
more or less resistance into tl e i c c it tl o it ite
rially affecting tho olectromotivo force, anil so it ollccts,

just iis truly, tv clmngo in tito strength or tlio current tu
does the koy.oin case 91), which key o simply introduces
into the main circuit more or loss electromotive force with,
out necessarily greatly or appreciably altering the resistance
of such main circuit; ami since strength of current is sim¬
ply tlio relation of electromotive force to resistance, in any
circuit, it matters not whether we clmngo the electrmnntive
.force or vary tlio resistance in such circuit, siuco in either
enso wo alter its strength of current.

I am therefore led to give it as my opinion: 1st, that U19
invention shown and described in Edison's ease 99 em¬
braces essentially an elomont of grcnt iinportanco in case
JI ; and 2d, that tlio third claim of enso II does really
cover that peculiar feature of case 99 which refers, us above
explained, to tlio entire iudcpcmlcnco of tlio two suts of
simultaneous signals.

MOSItH tl. FAKMBIt...

U. S. Naval Ihrjmlo Station, Newport, It. L

It will bo observed tlintMr. Farmer begins by saying that
tlio two inventions •• have a common object;” anil this object
ho says is “ to pass simultaneously two signals instead of
“ otic, over a singio wire which connects two different sta-
“tions.” Then he goes on anil explains the peculiarities of
detail in tlio two cases, showing that ci|uivalcut elements
are used in each, and dually sums up by saying that, in his
opinion, “ the invention shown and described in Edison's
“enso 99 embraces essentially an element of great, import-
“ mice in caso II,” and “ that tlio third elnim of ease II
“ docs really cover that peculiar featuro of enso 99 which
“refers, ns above explained, to the entire independence of
“ tho two sets of simultaneous signals.’'

It is argued by tho Examiner, that although each appli¬
cation does contain a description of tho same combination,
and although this combination is employed in each enso
to accomplish tho sumo oml, viz., duplex telegraphy,, yet-
as in ono caso tho duplux transmission is in the. samp
direction and in tho other it is in opposite directions, thiit
the results are ditl'crcnt, and oonscigiciitly the inventions,
must bo different In reply to this wo say that tlio results '
are not different.: Each Invention purports to bo an improve-
uient in duplex telegraphs, anil describes and claims a pur? -

combination applicable to duplex telegraphy. Iho
ition is now, it is the same in each case, tho only
tl difference being tho particular subdivision or spo-
duplex telegraphy to which it is applied. Now this
•luiin lor this now combination belongs to one of
uses or tho other; it cannot belong to both, for tho
1 not grant two patents for the same invention. Tho
icr maintains that it belongs to neither, but must bo
ted as referring to the particular arrangement ot
,vhich are made usu of to produce tho particular
• the result in each case. If tho combination claimed
ot a now ono, this reasoning would have some forco;
attempt is made to disprove its novelty, and wo may
ire assume Hint this much is granted. If it is granted,
pillion t fulls to tlio ground, for tho principle is well
’that tho inventor of a new combination is entitled
cut; its exclusive uso for any purpose to which it is
iblo. The language of tho courts on this point is
ml; emphatic.

10 plaintiffs patent covers all tho modes and pro-
is by which the principle of his invention is made
stive in practice.” ( Tilghmun v. ll'crtr, 2 Fisher, 220.)
m patentee is not obliged to state everything to which
nvciition is applicable in order to bo protected in tho
y meat of tlio exclusive right to such things.” (Fib v.

, 3 Fisher, flii.)

'lien the menus, devices, and organization are pat-
d, the patentee is entitled to tho exclusive uso of this
Imnicnl organization, device, or means, for all tho
1 and purposes to which they can bo applied, to overy
Btion, powor, and capacity of his patented machine,
lout regard to tlio purposes to which ho supposed
innlly it was most applicable, or to which ho supposed
rim solely applicable, if such wero liis original viow.”
ccr v. lloach, 4 Fisher, 12.) This was reaffirmed hi
isc of McComb v. JirutUe, 5 Fisher, 381.
teems to us that it needs no further argument to show
Mr. Wilbor’s admitted incapacity under tho circuin
cs to discover anything in the claims of caso XI which
cts with those, of caso 99, is of such a nature as to
nsly imperil tho important interests which arc confided
in nn n Prmciiml Examiner in tho Patout Ofllco.

Dine ol value! ” in qtmdruplex telegrai
iof all tills, when the Commissioner,
ily wholly depcmlent oil tho Examine
o tho uliaractur and scope of ease If,
nine about it, lie informs the Commissii
:cs, that ease II “coulit not inmibly b
opciutioii ol his decision, us it was Ih
ten !”

emnil— Observe tho extreme euro wl
Wilber from lirst to last, to prevent tlii
o oven of the ' existence' of case II fi
irney or other parties interested in ci

ison conveyed his interest m enso 1)9, among others, tc
. Jay Gould, with the evident intention, ns subsequent!}
flier rovonlcd by his letter to tho Commissioner of Patents
January 23, 18715, of defrauding Mr. Prescott of ldi
lits. This sale to Gould is evidence tl I
lint Prescott commenced at least as early as January 4
15, mid ns an arrangement involving interests of sael
[gnitndo is not usually mado in a moment, it probabl;
nmeucvd some days earlier. If all the subsequent ex
ordinary acts on the part of Mr. Wilber, in relation ti
iso two cases, were in furtherance of a pre-arranged plan
is quite possiblo Unit oven this lirst act may also havehai
nothing to do with it.

On Snturday, tho 23d of January, Edison writes a lette
the Commissioner of Patents from Newark, N. J., in wliio
i says : .

“ I therefore withdraw my request for tho issuoof patent
tor Duplex and Quadruplox transmission to Edison an
Prescott, and unite with Gcorgo Harrington in his pet
tion, this day tiled in your ollice, requesting the issue <
tho letters patent to Gcorgo Harrington and myself, i
tho proportions set forth in tho power of attornoy an
assignment of April 4th, 1871. and tho contract tlierei
recited.”

This letter, which couhl not have reached the Comini
suer before Monday, January 25th, 1875, formed the has
r the action of tho Commissioner, which is thus alluded I
Y Wilber on page 2 of his statement :

« Some time in January, 1875, an order came to mo
solid to tho Commissioner cases 94 to 100. I was altc
wards sent for .'by him, mill instructed to read the Hu
rington and Edison assignment or agreement, and repo
in writing tho meaning or scope of the term < fast sy tom
or ‘fast telegraphy,’ and whether inventions of this cla
were included thereunder.”

Wilber docs not state how long afterwards it was heft
io Commissioner asked him to report in writing upon t
hove mutter, but it is significant that his report— a .mot
f ingenious sophistry— was delivered to tho Commission

equally sophistical argument in opposition to Mr. Prescott's
charges of improper action in this oaso.

Mr. Wilber makes tlio assertion botli in his statement
page -1, and again in his argument, page 45, “ that all partici
had oilieiai notice of the existence of cnscs A to XI nearly
three months beforo the issuance of II.” Ho oilers m
proof of the truth of this, ami it is not capable of prool
In his report to tlio Commissioner, of January 29th, 187C
it is truo Mr. Wilber incidentally refers to “certain othe
cases, numbered by letters A to H inclusive (duplex cases)
ns coming within tlio seopo of tlio Harrington assigi
meat; but this is in no sense a notice, ollicial or otherwise
to “ all parties concerned.” It is simply a private con
munication to tlio Commissioner, ami contains nothing t
indicate, oven to him, that these applications were mainly
duplicates of tlio later scries. Mr. Prescott knew nothin
of tlio contents of this report, nor was it intended tlint li
should until after ease II was allowed to go to patent and
pnss into tlio hands of tlio adverse party. There is not on
word of truth in tlio statement that Mr. Prescott was not
lied of the existence of case IX beforo its issuo to Ediso
and Harrington, nor was any notice ever given him tlinta
Edison’s cases on illo in tlio .office were .open to tlio inspe
tion of all parties interested. If any such notice was givoi
why has Mr. Wilber not given some detailed information i
regard to it t ^

In tlio matter of tlio grant of Lottors Patent of tlio
United States, No. 108,385, (case 111).

1. Tlio invention described in application Ho. Ill, of
Tliomns A. Edison, (lied January 20, 1875, was included
within tlio seopo of tlio Commissioner’s decision of March
20, 1875, and tlio Commissioner was duly notified by Mr.
Prescott’s counsel that such wus the case.

2. Tim Commissioner, in piirsimnco of such notification,
ordered Mr. Wilber not to issuo any of Edison’s applica¬
tions (other than automatic) until Mr. Prescott hail had
an opportunity to identify such of them ns lie claimed were
embraced witbiu the seopo of tho decision.

3 Oaso 111 was duly idontilied ns ono of tlio cases com¬
ing within tlio provisions or tho Edison-Prescott assign¬
ment. As a necessary consequence, it was subject to tlio
Commissioner's decision of March 20th, and in accordance
therewith, should have been issued to Edison and Prescott.
Mr. Wilber directly violated tlm order of the Commissioner
by issuing enso 111 to Edison, in any case; If, ns lio assorts,
ease 111 had not to his knowledge been identified, then bo
could not possibly lmvoknown which particular applications
had been idontilied and which had not, anil lie. had no
right to issuo any of tho cases without this knowledge. If,
as wo assert, tho enso hail been identified as being ono ot tho
Prcscott-Edison cases, anil the 'evidence thereof placed in
Mr. Wilber’s hands, then bis violation ortho onlorwns
clearly an act of wilful disobedience.

|. Tho assignment of Edison to Prescott, of August 19 th,
1874, and printed in full on page 35 of tho accompanying
pamphlet, marked A, convoys to tlm latter, by an instru¬
ment under seal, certain improvements in duplex tele¬
graphs, described in applications numbered 94, 9u, 90, 97,
98, 99, and 100, dated August 19, 1874, and contains in ad¬
dition thereto tho following clause : .

“And whereas, said Edison has also invented other im-
“provomonts in duplex telegraphs, the descriptions of
“ which have been lodged with Georgo M. I helps, for tlm

“purpose of models being constructed, it is hereby agreed

“that each inventions areinelndcd in this press t gee et
“and that when the applications for patents are made, tho pat-
“cuts to he granted in accordance herewith, anil that tho said.

assanS-s

109,' hutosfve) referred to therein, wore filed °» Soi’tomber
2d, 1874. No. 112 was filed on December 28th, 18.4. On tlio
23d of January, Georgo Harrington made application to
tho Commissioner of Patents to have tlm above mentioned
applications, including No. 112, issued to Edison and him¬
self, instead of Edison and Prescott. . . .

In a letter of tlm same ilat 1 loit.„t 1 rtto

from Newark, N. J., Edison withdrew Ins request for the
issue of 'tlieso patents to himself and Prescott, and united

with Harrington in the request Hint tlioy bo issued
self aiiil Harrington.

The application now in question, ease 11 1, was II
nary 20th, 1875. This, nmlcnso 112, ]>rovioiisly lile
then exactly upon tlio same footing, caeli of thei
cases wiiose descriptions lmd been lodged with Mr.
for tlio purpose of having models constructed. U
receipt of tlio nbovo communication from Edison m
rington (which, ns tlio 24th was Sunday, conhl linn
been beforo tlio 2.1th), tlio Commissioner ordered 1
ber, ns ho says, to send him cases 01 to 100 (anil p
112 also). Ho likewise instructed Sir. Wilbor, at
incut interview, to road tlio Harrington and Edisoi
nont, or agreement, and to report in writing tlio n
>r scope, of llio term “ fast, systems ” or “ fast tolc{
»nd whether inventions of this class (/. e., duple:
ions) were included thereunder.

On the 2!ltli of January, Mr. Wilber made his
eport to tlio Commissioner, slating Unit ho was
‘ opinion that tliu cases referred to clearly fall within
‘.visions of tlio assignment anil power of attorney
1 to.” This construction of tlio Harrington and Ed
itrimient of April I, 1871, was contested by Mr. J
lpon a hearing beforo the Commissioner of -Paten
‘iter full and claborato arguments by tlio respeeth
icl on both sides, tlieCouimissioncr decided on Mar
87o, that the patents for tlio inventions in conti
'•hen ready for issue, should bo granted to Edit
’rescott, and not to Edison and Harrington.

The Commissioner’s decision or March 20th, 187
lortcil in the Official Gazette, VII, 422.

In it tho Commissioner sots forth in full tho ussi
if Edison to Prescott, including tlio express provis
lie improvements in duplex telegraphs, tho descrip
vhich.liad been lodged with Mr. Phelps for tlio pm
laving models constructed, wero to bo inuhided in
ignnient. Obviously, therefore, it only remained
ily tho particular applications embodying these ini
ir improvements to tho siitisfnction ol' tlio Ooninii
o.plnco thorn on exactly tlio same footing with cast
00. Application Ho. Ill was allowed by tho E:
in tlio 25th of March, and Mr. Prescott, as ono

partios in intbrost, was duly notified by tho attorney on tho
"(itli. Ho thereupon took immediate measures to call tlio
attention of tlio Commissioner to tho fact that this applies-
thin, us well ns *12 and 113, woro included in liis decision.
On tho same day ids counsel addressed the following lottor
to tho Commissioner:

Hew Yoitic, March 20, 1875.

Hon. J. M. TiiAwimt,

Onmmimioner of Palenlo,

Washington, U. C.

Sir: We havo tho honor to notify you, on behalf ol Mr.
C’r. B. Prescott, that caso Ho. Ill , by Thomas A. Edison, is
ono of tho inventions specially referred to and covered by
tho agreement between said Edison nml Prescott, dated
August tilth, 1874, anil therein referred to anil identified
ns follows : “ And whereas tho said Edison 1ms also invented
•i other improvements in duplex telegraphs, tho descriptions
“of which have been lodged with George M. Phelps for tlio
“purpose or models being constructed, it is hereby agreed
« Hint such inventions are included in this present agree-
« ment, iiud that. when tlio applications for paten ts aro made,
« tho patents to be granted in accordance herewith, and that
“ the said Edison shall sign tho required papers therefor. >
We are informed that a patent is about to issue m case
Ho. 111.

Wo suppose it to lie incumbent upon Mr. Prescott to sat-
isfy your Honor by proper proofs of tho identity ol this in¬
vention witli those described as above quoted. Tho ques¬
tion here would bo entirely different from that .made on tlio
recent hearing before you, to which Mr. Harrington was a

* *Wc are directed by Mr. Prescott to ask you to appoint a
time for a hearing, at which he will place in evidence bolero
YOU tho models, descriptions and other papers, by which it
will ho shown that tho agreement aforesaid applies to and
covers caso Ho. Ill and other cases, to wit, Hos. 11- am
113, as well as certain caveats, the numbers ol which will
bo forwarded to you in a day. or two, tho sumo as t covers
tiio cases which wore before you upon tlio hearing rotor-

Wo will also ut that timo, if you havo any doubt upon

D distinct assertion, tliat after the Commissioner romlcrcd
, decision, on tiro 20th of March, ho segregated tho cases,
iding 01 to 100 to the Secretary of tho Interior, mid re-
uided the .balance to him (Wilber), and that on tho 21th,
eouinionecd to examine and pass upom them. Now, by
rcienco to tho record, it will be seen that it was not until
meh 30th that tho Secretary of tho Interior ordered
scs 01 to 100 to be transmitted to him. This was ten
i yt after the Commissioner's dccisiou had boon rendered,
ven days after Wilber had commenced aution upon tho
sos remanded to him, andjire days after ho had passed
ion and allowed easo 111. The Commissioner, nt tho end
1 his decision, says: “I’/io applications are remanded to
the Principal Examiner, and when ready lor issue, tho
patents will be granted to Edison and I’rcscott,” etc.
hereforo, tbeso cases must have remained in Mr. Wilber’s
ossession until called for by tho Secretary’s order, ten
ays afterwards. This is confirmed by tho statement ol
io case in Secretary Chandler’s decision (Official Qazetle,
S, 403), who says, “ After a full hearing of the parties,
lie (tho Commissioner) decided in favor of the latter
(Edison and Prescott), and thereupon remanded the appli-
cations to the Principal Examiner for further proceedings,
ill accordance icitli the practice of his Office. On tho 2ilth
of tlio same month, Harrington presented a potition to
1 Hon. 0. Delano,” etc., etc.

Finally, wo hnvo tho positive stntoiuont of Ex-Commis-
loner Timelier himself (see appendix E, post) that the ap-
ilicutions were all remanded to Examiner Wilber ; that
vlion called for by him to send to the Secretary of tho Jn-
crior they were brought from Examiner Withers room, and
hat tboy were nt that time properly in Ins custody, ilns
s again continued by tho statement of Mr. Emory, who,
ipon inquiry, says that ‘'enscs from ill to 100 wore got out
‘ of Wilber’s room by him to tnko to tho Secretary.”

Thus it is clearly shown that Wilber’s statement about the
segregation of tho eases by tlio Commissioner, prior to tho
23d of March, is not true. The latter, as tho record shows,
received no orders from tho Secrotary until tho 30th.

. 3. Wo have above shown that Mr. Prescott, through lilt
counsol. Messrs. Porter, Lowroy, Soren and Stono, oflleinUj

notified tlio Commissioner ol Patents ns early ns Mnrcli
27th, that ho claimed an interest in applications Nos. 11],
112, 112, on the ground that they were embraced within the
scope of the decision of March 20th, nml that the Commit-
missioncr thereupon sent for Mr. Wilber, nml ordered him
not to let 'any of Edison’s enscs, other tlinn automatic,
go out until 31 r. Prescott lmd nit opportunity lo identic
them. It was subsequently arranged between the Com-
•missioncr and Mr. Quimby, who represented 3lr. Prescott,
that the models referred to in the Edison. Prescott agree
incut should bu identified by Gcogo 31. Phelps, .Tr., the
gentleman under whoso supervision they were const ructcfl,
Accordingly, on or about the llltli or April, 187ii, 3Ir
l’llelps visited Washington in company with Mr. QuiniUy,
inspected tlio models in the Patent Ofllce, and identified that
of case 111, among others, us having been made by him. The
following day ho executed an nllhlnvit embodying the itlcnt
ideations of the models of cases 11 1 and 1 12, which aflhhivii
ho delivered in person into tho hands of Mr. Wilber. (Foil
sworn evidence of this action see appendix B, p. IS Wilbert
Statement.) Thus, ovon if Mr. Wilber had not previously
known that case 111 was one of those claimed by Mr. Pres
cott, he could not have failed to bccoino nivnro of it whoi
this ntlidavit was placed in bis liuiuls.

lint there is evidence that lie must have known it. He had
already examined and passed ease 111. Thu model belong
ing to the application had a small brass plato attached to it,
bearing the inscription “ Prescott and Edison,” which
could hardly have escaped bis notice. Ho had, farther
more, already withdrawn this case from issuo, pursuant to
n positive order from tho Commissioner, for tho very pur¬
pose of this identification.

Mr. Wilber pretends that this aflldnvit of identification
never was filed with him. Sir. Phelps's ovidonce that it was
so filed is clear and omplmtic, and there unn bo no doabtol
its truth. Is it reasonable to supposo 3Ir. Phelps would
have taken tho trouble to go from Now York to Washing¬
ton for tho express purpose of identifying theso models,
and have executed such nn nilidavit, nml returned without
phioing it in tlio hands of souio official at tho Patent Oflicot
It is impossible that3Ir. Phelps should bo mistaken in this
matter. His testimony, is explicit, ovon to tlio very words
ho used when he delivered the paper to Mr. Wilbor.

But oven if it be true, as Mr. Wilber asserts, that lio
never sawtliat affidavit, it does not afford him one particle
of justification in permitting case 111 ’to issue. The Com¬
missioner had ordered him not to issuo it until Sir. Prescott
lmd lmd an opportunity to identify it. This order was never

revolted, countermanded, or superseded, and Mr. Wilber no¬
where oven nttompts to show that it was.

If, as ho claims, be never saw tlmt affidavit, how then
could ho nssumo to determine which eases lmd been iden¬
tified by 3Ir. Prescott ns cases in which ho was interested,
and which had not been so identified I
Mr; Wilber withheld this case until tlio vory day that
Commissioner. Thacker's term, of office expired (tho Ooiu-
.missionor who had ordered him not- to issue it), and then
allowed it to issuo. This coincidence, ho explains, arises
from tho fact thut tho final fee wns paid at that particular
time. But tho fact thut tho fee wns paid just at that
particular time, by order ol' Ellison, without tho kuowlcdgo
of Prescott, is ns much apart of tho coincidence as any¬
thing clso is.

• In tho notes appended to the statement and bnet ot Mr.
Wilber, which wo have liavo had printed foi tho convcni-
euce of tlio Committco.-wo have carefully sought to point
out tlio misstatements of facts, falso promises, sophistries,
•and the manifold other devices designed by him to
bofog tho case, and doceivo the Commission appointed to
investigate bis acts in tho matter of the wrongful issuo of
patents Eos. 102,033 and 108^180 to Edison anil Harrington,
for inventions which the Commissioner of Patents lmd pre¬
viously decided were legally anil of record in .the Patent
OiUco tlio property of George B. Prescott anil Thomas A.
Edison; and wo do not consider it necessary to ; restate
them all here. But wo do tbink it desirablo to place before
you in a conoiso form the more ilagnuit: instances of his
misstatements, together with a reference to. tlio .oil emi
records and other proofs which dearly demonstrate then
falsehood. ^ ' ! \ 1 : *

Oil p» go 4 of tlio printed copy of Mr. Wllboi h statement
•ho save: “The title to some of Edison’s inventions being
« tho ‘subject of dispute, I, was determined .that , all .inter.
'« csted should, if tiioy choso to, know what lie had. filed m
;« tho office. They were all open to tho inspection oj hoth.par

. -’-v-

“ lies, so time if tlioro wns anything tlioroin either might
“ clnim, they should Imre uotico tlmt such was in tlio office;
“ and talco wlmt action they chose.” Again, on page 45 of
his nrgumout: •< It should bo homo in mind, in this conncc-
“ tion, that all parlies had official notice of the existence of Me
“ cases A to IT nearly three months before the issuance of IT;
“ that thoso cases were open to their inspection, and that
“ no notion wns taken, no claim made to lend any ono in
“ this oflico to suppose that Mr. Prescott wns in any way
“ interested in any of them.”

Thoso statements are utterly untrue. No such notice
wns over given, nor wns oven tlio slightest intimation ovci
made to Mr. Prescott or his representatives Hint all or any
of Edison’s cases wore open to such inspection, nor has Mr
Wilber brought forward the slightest proof of any such so
tico having boon given. No “olllcinl” or other “ notice,’
was given to Mr. Prescott, or his representatives, of the
existence of ease H, “ nearly tlirco months,” nor three sco
omls before the issunuco of tlio patent for case II. licsidei
this the ntnonded application in case II wns only Died in tin
Patent Office one month hud four days before its issue, ai
tlio records show. ‘J

In ordinary cases it is difliciilt to prove n negative, ha
in this instance it fortunntcly happens that wo are able ti
do so. On tlio 14th of May, wliou Mr. Quiinby had oh
tained from Mr. Prescott a copy of tho file and contents o
patent No. 102,(133 [case Tl], and during an interview witl
tho Commissioner of Patents, on tlint day, asked him wh;
Mr. Prescott or his attorneys had not been permitted to sci
tho application in case H before tlio patent was issued, ‘hi
roplioil that Mr.: Prescott was not entitled to information
from tho oflico ns to nil apxilicntions of Edison.

In order to manufacture ovidoucc to prove that the Com
inissioucr’s decision of March 20th, 1375, did not inchld
any cases otlior thnn thoso numbered 04 to 100, Mr. Wil
her says (page 4). !

“ The decision mndo by tlm Commissioner was npponlci
“ front, ‘'Thereupon the Commissioner forwarded to the Hoi
“ Secretary cases 01 to 100; with his decision, and the othe
“papers relating thereto,- and returned to me all the other casei
“ including tlio 'series A to H; 111, 112, and 113; If, in hi
“judgment, any of these had also been embraced within hi

« decision, lie should and would have forwarded them to tho
a Secretary; but by this segregation lio determined what wns
“and .what wns not embraced within his decision. And I
« may add that cases 04 to. 100 have not been in my posses-
“sion since tho time I forwarded them to tho Commissioner a
a year ago this month [January, 1875], while, as boforo stated,
«tho remainder were returned to mo to take their places

“among my ponding eases.”

Here are two distinct statements, both of which nro
contradicted by the official records, and by the accompany¬
ing letter of Ex-Commissioner Timelier [seo Appendix E]
and tho statement of .1. M. Emery, Esq., clork m clinrgo
or appeals. The Commissioner's decision of Jlnroli 20th,
“1875 (O. G VII, 423) concludes ns follows. “The up-
"plications are remanded to the Principal “ Examiner,” etc.
Secretary Chandler, in his decision (O. G., IX, 403), says
j tlmt after tho decision was made tlio Commissioner * there-.

I " upon remanded the applications to the Principal Examiner
a for further proceedings in accordance with tho practice of Ins
“ office ” Mr. Wilber acknowledges that tho otlior cases
wore returned to him, ami that on tho 23d of March ho
commenced to examine them ; but tho appeal to the .Secre¬
tary ortho Interior was not umdo until tho 20th of March,
and it was not until tho 30th Mnroh-toi days after the de¬
cision— tlmt tho Commissioner wns ordered by tho Score-
tary to transmit to him cases 01 to 100. (See the corre¬
spondence, pp. 25,20, appendix to WilbePs statement )
Where wore cases 04 to 100 from the 23d to the 30th of
March 1 They were in Wilber’s hands, as tho letters of Ex-
Coininissiouer Timelier and statement of Sir. Emory dearly

P1 To°snpport the theory that ho did not know that case
111 was ono of thoso embraced in tho decision, Mr. Wilber
is obliged to deny point blank that 1m over saw Mr. Phelps s
affidavit identifying the models in tlio case. Ho says: I
“understood that Mr. Phelps wns to make m. affidadt,
“ that that wns Ids object in looking over tlio models. E«f
“ he filed no such affidavit with me. If ho had biought to
“ such a document, knowing him to bo unaccustomed to
“ the office routine, I should have first asked him, ns is ay
“habit in such cases, if belaid l.nd it stamped foriegnla
“ filing. But I cannot remember any such occurrences, an

‘ I am confident tlmt ho is mistaken in ills recollection1 of
I wlmt ho did with it." This is directly contradicted by
lie evidence of Mr. Phelps, givon by him ill person befon
ho Commission on tlio lltli of Juminry, 187(1, anil wliiol
s substantiated by his sworn statement (printed on pngi
18, appendix to Wilber's statement), tlio original uiTIdnvit
joing forwarded herewith.

Again, ns nn oxeuso for his hurried and hasty action ii
ssuing easo If without knowing, ns ho claims, wlmt i
.•enlly contained, ho makes tlio statement that tlio Comniii
doner “said ho laid received a teiogmm from Mr. Scrrol
‘complaining of mg delay in not sending forward a cos

I (enso II), which had boon properly nmonded somo week

II bofore.”

Again, on pago 81 of his argument ho again assorts tlio
this hurried examination was “ made after the interne'

11 with tlio Commissioner on tlio day of tlio passage or tli
11 enso, nn interview’ incident to complaints minlc of my noi
" action on the case.”

By reference to tlio statement of Commissioner Tlmchi
(page 1C, Wilber’s statement), it will bo scon that ho mnKi
lio reference to any “ complaint.” The telegram itself (pa{

23, fil'd) is simply nn inquiry, and not in any senso a cot
plaint. It simply says: “Please advise me condition '

“ caso IT, of T. A. Edison, filed April, ’73, anil amended by’
“ himself. Tf ready, please issno immediately,” etc.

To clear himself from tlio proof which Mr. Pope’s oi
deuce affords that ho well know the scope and value of tl
claim which Edison had inserted by amendinont into ca
H, Mr. Wilber is again obliged to resort to tlio direct contr
diction of tlio witness. Tlio original niemnmmlum widen.
Mr. Popo lnndo at tlio timo is submitted ill evidence,'
together with his' sworn affidavit detailing all the occur-1
ranees of tlio interview with great minuteness. It will be--
seen that Mr. Pope’s memorandum corresponds almost word-
for word with tlio claim us contained in tlio patent or case'-:
II, although liolind no knowledge whatever at that I iino't;
of any of tlio cases in controversy. Mr. AVilbor gives in¬
version of his statement as follows: “My statement was?-
"'•the combination, with a line, of ono receiving instrii-
moat, operated by changes of polarity, irrespective of-
“ ‘ tension, and ono receiving instrument operated by1!

changes of tension, irrespective of polarity, at am
the fine ;, and a koy changing the polarity and
changing tlio tension at the other end of the line: ’
This differs from Mr. Pope’s version by being mat
icciilc, with tlio evident intention of producing
ession that ho had in his mind tlio particular a
out described in case 09. Yet ho goes on to say
«t breath: “This statement, which is in substa
ono I did make, recto a comlanation differing ft
thing I knew of, and expresses tlio elements and n
meats necessary to accomplish tlio Hrst stop in i
plex, viz., send tlio two messnges siimiltnncousli
direction.”

Ho says ho knew of no such combination ; yet
tumbled- caso 99, anil had written an official lotti
ition. thereto on December 31, 1874, more tlm
loiitlis prior to tlio date referred to! .In. view of t
'helming proofir which liavo been brought forwan
ntiro falsehood of Mr. AVilber’s testimony in re
thor matters of fact, what importance can bo attr
is denials' of the statements contained in tlio affli
Ir. Popo and Mr. Pholpsl

On pnge'14. Mr. AVilbor makes the statement t
Icrrell was the solicitor in the cases whoso issue
ilninod of. This is not true us regards case IT, as tin
if the caso on tlio flics of the office will prove; i
my of record, other than Mann & Co., appearing in
lies.

It- is respectfully submitted that tlio evidence i
inve brought forward of tlio wrongful mid imjiropc
ir Mr. -AYilbor, in regard to tlio two oases whose
loinplaincd of, when taken in connection with
ihown.by tlio official records of tlio enses contain!
Hies of tlio office,. as well ns Mr. AVilboris own m
mid statements in relation thereto, fully sustain tli
preferred against him in' Mr. Prescott’s lotter to
niissioncrof Dccouibor 18th, 187f>, and conchisivcl
slratos his entire unfitness to occupy tho impoi
rcsponsiblo position of a Principal Examiner in tl
States Patent Office. Even if wo tnko tlio most i
view of Mr. AVilber’s professed inability to ilisoov
semblance bo'twoon tho subject-matter of caso H, i

only bo excused on the ground of
sequent conduct in deceiving tliu
to tiie contents of ense II, in nll<
notice, oitlicr to tho Commissioner
in ease !)9, wlicn lio well know, i
to Jfr. Tope proves, that it oonvo
tlio “point of value ” in ipini
especially in issuing case 111, i
obedience of tlio orders of the C<
the very day that tlio latter’s t<
dually the innumerable sophistric
oven actual misstatements of fact
abounds, somo of which wo hnvo
all tlicsc facts Icavo no question v
lias grossly abused the olllciul poi
ho 1ms douo this m pursuance o
for tlio uninistakalilo purpose of
parties who wero conspiring toge
cott of his rigiits in these invei
odicial liinlfcasnnce on tlio part of
lias been subjected to a vast nmo
convenience, ns well as great pe
all the facts, it is respectfully sub
for the rights of the public, and
Patent Ofllce itself, imperatively r
Wilber from tlio responsible olllei
holds.

acity, while his self
nissioncr in respect
it to issue without

teres ts tlioreiu, wider certain assignments of record i
o Patent Olllco, and that a certain George B. Presco
so claims to hnvo the said lottors patent issued to liiti
ilfnnd tho said Thomas A. Edison, by virtue of an a
guinea t from tho said Edison to tlio said Prescott, also
icord. That tho decision of tlio Commissioner of Patou
is bcon rendered directing tho issue to tlio said Presco
id Edison, which your petitioner respectfully insists wou
d contrary to equity and in violation of tho spirit of tl
iw in such cases uindo and provided. And your petition
irtlicr states that ho is prepared, should time bo ullowi
ini for tho purpose, so to present his claim as to provo
■hat ho respectfully insists would bo doing a great wroi
l tho promises ; and forasmuch as your orator is ndvis
lint under tho Act of Congress in this connection, t
loiiiinissioaor of Patents is, in tho cxerciso of his powi
s such, subject to the direction of tlio Secretary of tho J
crior, your orator prays that you will direct tho proccedin
icrotoforo laid before tho Commissioner of Patents m tl
egard to bo transmitted for your examination and rovisii
o the end that tho patent may bo directed to bo issued
rour petitioner and said Edison.

Jno. XI. B. IjATitonu, I Of Counsel ,

John K. Co wen, j Petitioner

' Appendix

Appeal of George Harrington to

To the Honorahlo the Secretary oft
The petition of George Hnrrii:
scuts that ho claims to have
dorstood to-be ready to bo issu
Thomas A. Edison, tlio inventor <
posed to bo patented, iu the prop

' Washington, D. 0., March 30(/i, 187f
Silt: I transmit, herewith, a copy of a petition that
been presented to me, iu relation to tlio issue of letters ]
cut lor alleged Improvements in telegraphs, ami, agrees
to tho prayer thereof, you are hereby directed to transmi
this Department tho proceedings ponding before you m
matter of tho applications of Thomas A. Edison, nssigi
&c., niimbors 9-1, 05, ill), 97, 98, 09 and 100, for letters ]
cut for alleged improvements iu telegraphs, for examine
and revision.

C(IH0 you slinll proceed to issuo tlio letters pntcnt, be
my examination and determination of tlio questions
ntod, you arc requested to cull my pcrsonnl attention
) fact and to tlio letters patent, to tlio end Hint I may
indrertcntly sign the same.

I nni, sir, very respectfully,

Your obedient servant,

0. Delano,

APPENDIX 0.

Secretary Delano’s Decision.

Washington, D. 0., April 14, 1875. J
s tlio practice of tlio department to sign without in-
all patents tlint aro sent up from the Patent Office
ho signature of tile Commissioner attached before
to presented'. As far as I know, it has bceu tlio prae-
the Office from time immemorial. I cannot say to the
horcol the memory of man runneth not to the con-
xc. Jty memory only dates back to tlio day of Sccro-
ivmg. The records or the department, ns has been
sorted by tlio counsel, show that applications to the
"J t° withhold his signature to these patents have;
iry rare, if 0no hns ever been made. Nevertheless, 'I
J clearly of tlio opinion tlint when my attention is.
to tlio facts of a case, mid my judgment is that a i
should not be issued, it would bo my duty to withhold
mturo from tlio patent. But I think good pmctico
s that my opinion should rest upon tlio case ns pro-'
to tlio Commissioner;' and, therefore, I should no£ ;
lien, l think, under any circumstances, to direct tlio :

, .ol 0tl‘01' evidence than that which was before '
a miss'oner. Certainly in this case, at this stage of
f *? wwwilling to give ini order for tlio taking of ’
8 continuance, as tlio counsel upon onesided
2, <«'!•, Now, as to whether W .hy'judg^
rshall notdeoni it niy duty upon tlio ease, ns

that have boon submitted to day— cither todi
or contiiiuo it, and allow additional tcstimoi
in it I reeognizo tlio fnct that to tlio Count
trusted, in tho first distance, tlio duty of o
deciding upon all questions that arise bofo
office, and are presented to him ; but 1 am ui
my mind to tho conclusion that it would bo m,
ir patent, because in his best judgment lie lint
ho issued, if I, on tho evidence in tlio case m
mo, should bo of tho opinion tlint his com
dearly and distinctly erroneous. I do not
ibout what I should do in a doubtful case. 1
:o express any opinion at present in any otlie
[ havo used, namely, and if tho facts in the
looted by tlio document by tlio Commissioner
aitisfy mo that it was wrong to sign tho patei
loultl not conscientiously attach mynanio to it
osorvo tho expression of any opinion in ref
loiivictions ns to whether this patent should i
io issued. I am inclined to think, that in no
mdertako re direct tho Oommissioiior ns to 1
codings, nftor I hail determined to withhold
rom a patent presented.

Appendix D.

Letter from Qeo. B. Prescott io J. jlf. Thaclier
sioncr of Patents.

New York, Mar

Ton. J. M. Thaclier.

Sir : In your decision of Mnroli 20, 1875, on
f title in tlio raattor of tho applications of

, xu.iuuvumunra m uupiox Telegraphs, you C(

imo by stating that u tlio applications arc remanded
iio Principal Examiner, and when ready for issue, t
ntents will bo granted to Edison mid Prescott, nssignt
f Edison.” Will you please inform mo whether all l
III dications in tlicso enses wore, in foot, remanded to J>
minor AVilbor, in nccordmico with your decision, and
lioso custody they wore whon culled for by tlio Secfctn
r tlio Interior, on March '30, lSTflt

■tter from J- M- Timelier, Ex-Cuinmmioncr of Vatents,
George 11. Vreseott.

Nkw Yohk, March 24th, 1870.

:o. B. Brescoll, Esq.

S™ih' r“!llj'to y°"r »0ta of this date, I would sta
‘ *1,e f?>j>cat,ons Covered bg mg decision of March 2
, ™ W,IW,‘ y°n refer, mere all remanded to Examiner IP
rJT'J fll* : reguIar comse> «>° opplications we
. uj mo from tlio Commissioner's room to the Clci
vmg charge of all appeals to tlm Commissioner, then, i
», iui. Winery, who, I suppose, took thorn to Mr. Wilhei

Whon those applications woro called for by mo in ord<

•porly in the custody of the Examiner, Mr. AVilbor.

. Ecspootfully yours,

J. M. XiiAonur

BEFORE A COMMISSION

COMMISSIONER OF PATENTS,

Charges preferred by GEORGE B. PRESCOTT against
' Z. F. WILBER, a principal Examiner in the United
Stales Patent Office.. '

STATEMENT' AND • BRIEF^OF :Z. f. .WILBER,

NOTES

EXPLANi

ACCOMPANIED:

GEORGE B. PRESCOTT, XND DOCUMENTARY

support,

and Kb. 01 in roforonco to F. Part of 112 was also rejected on
rofovonco to Edison’s prior patent Eo. ICO, 810. ITnd l tlion
thought that II and 00 were tlio same, I should have pursued
tho same course in relation to 00.- 1

Some timo in January, 1875, an ordor came to mo to send up
to tho Commissioner cases 01 to 100. I was afterwards sont
for by him, and instructed to read tho Harrington and Edison
assignment or agreement, and roport in writing tho meaning or
scopo of tho torm, “ fast systems,” or “ fast telegraphy,” and
whothor inventions of this class were included thereunder. I
made tho report. Although its merits or demerits lmvo nothing
whatever to do with tho matter in issue, it has boon lugged in
with some would-be sarcasm, “as illustrating tho temper of
“ mind in which ho approached tho subject.” So, in soil' defense,
it may bo well to stato tho conclusion arrived at in tho roport,
and tho “why thereof,” “ns illustrating tho actual’ temper,”
otc. Tho Journal of tho Telegraph liml The Telegrapher aro the
tico leading electrical journals in this country. The first ‘is -re¬
cognized ns tho official organ of tho W. U. Tel. Co., and public
opinion gives tho control of its editorial columns to Mr. Pres¬
cott, assisted by Mr. Grace. Tho second was generally 're¬
garded as rather anti-W. U. ; was and still is published by Mr.
Ashley, a business associate of Mr. Pope, and, until some time
in 1874 (I think) Mr. Popo’s name appeared at tho bend of- its
columns ns associate editor.'

In tlieso papers I had noticed during tho fall mid suminci
several editorials on tho subject of fast telegraphy which were
fresh in iny mind. Under the generic caption of “ Fast Sys-
“toms,” or “Fast Telegraphy,” tho species “Duplex” and
“ Quadruples” were spokon of. I remomber ono, whore the
quadruples alone hnd been discussed, entitled “-More Startling
“ Inventions for Rapid Telegraphing.” Another (in tho Journal),
with tho generic title, “ Fast Systems of Telegraphy,” discussed!
ns species thereof, tho automatic, multiplex, duplex ninl mind'

last number of tho Journal of. tho Telegraph ventilates
ideas of , Messrs. Prescott and Edison on the subject oj
ni- rnlninaubv at considerable length. *

initio : whether the assignment' from
ilntcil April 4t1i, 1871, covers thoso inventions
it is not ncccs8nry to deternuno whether 1

returned to my room, wont ovor tlio enso (some-
nml sent it forward tlmt same afternoon,
dates of tlio amendment and allowance of this
ed Now York on business, and while there mcl
o had quite a conversation, tlio occasion for ami
as an application mado by him and his asso
■issno of Klcctrie liuilrond Signnl originally pat
Tlio main portion of tlio talk was an argument
o show mo that I was wrong in iv certain posi-
1 takon in treating that case. Tlio argument he
on, was- sulllcient and convincing, that if lie
tlio enso I would “back.” ITo said ho would
of it for Mr. Livingston, his attorney, to flx
My impression is that lie did take somo paper
tstoifs desk (Mr. Livingston was absent ut the
iterviow was at his olllce), and made a minute
o courso of our talk lie mentioned that lie hnd
jy the Western Union to examine, ns an expert,
inventions. Wo hnd somo talk thereon, not as
stwecii Prescott and Harrington, but ns to the
i dill'crcnt inventors, whoso names wero there
between whom an interference seemed possible
-• . Ho asked mo wlioro I thought tlioy touched,
linn. I hnd considered tlio subject somowlint
md compared tlio systems of these inventors,
vital and first thing to bo done in a qnudruplex
rniigomont by which two manages could bo sent
i one direction ,s* that this being done, tlio rccciv-
could bo easily duplexed by eitiier the diffeicn-
steins, the result would then be a qnudruplex.
iruplexes wero old, or rather that arrangements
messages simultaneously in one direction were,
stick laid been suggested having one receiver
’ c ““front and iinotlier to u stronger' cur¬
s’ thereof being immaterial : that others (or at
icon suggested in which wore used rovorsnls of
rcaso or deereaso of tension to effect the object,
latter three receiving instruments wero used,
;i*5'“i" polarity (ouo + and one -), the
d lull of tension (key 1 sending a + current
i, and key 2, sending a — current to iniiuonco
i tho keys woro used separately ; when used

ml novel' been officially cancelled. I signed
o of a habit I liavo in such eases, simply to si
tho original allowaneo it hail boon again in
lis was the last day of September, and tho send
gain at that particular tiino was simply because
n been seat. Said fee was received on tho -
nit day it had been called for, it would have g
to days beforo “ tho lato Ooinmissioiior’s tern
d,” instead of on tho very day. It had noth
tho fact that oil that day “ tho Into Conn
i of ollleo expired." .That was a “ chops anil tom
unstance that occurred. I nm safe in saying

ly statement of tho events connected with til

inns my own testimony thereon.

a, I desire to call your attention to tho record!

l’o tho fact that Mr. Serrcll was tlio solicitor l

over which the dispute as to title was, anil in

issue is complained of.3’

iter of Mr. Timelier, a copy of which is liorou

i to tho orders he gavo mo, and his roincmbra

fit nnd its filing or rather non-filing.

PATENT JiAW A SPECIALTY.

(Office of Coburn if; Thachcr.)

1100 ^ N. E. cor. Clark * namlolph St.,

CnioAGO, III., Jan. 15th, 18
Major 55. F. Wilber, ■

Patent Office, Washington, 1). 0.

^I have been so very busy ns well ns absent talcing tcstii
a part of this week that your loiters liavo remained i
severed. In answer to your inquiries, I will state tlia
recollection is that I received in the ordinary way some
liuiiiicatiou from Mr. Sorrell in relation to Edison s applic
but l do not rcmoinbcr whether it was a telegram or a i
I think that I sent for you immediately in relation to the
and told you that prior instructions ns to holding applici
of Edison related only to such ns were clearly within tho
sion I had rccontly made upon tho question ot title.

In reply you stated that tho application referred to b
Serroll could not possibly bo brought under tlio opointi
that decision, ns it wns for different subject matters, am
filed a long tiino before the applications designated in
decision, and, ns 1 recollect, beforo tho date of Edison s a
mont to Prescott ; although I am not positive as to
limiting this last statement. .

In regard to tlio other question about the Phelps pate
identifying certain models, my recollection is, that Mr. Qu
upon his representation that Mr. Phelps made the mod
Edison, obtained permission from mo to inspect said n
with Mr. Phelps, and afterwards showed mo an affidiiut
by tho lattor, identifying cortnin models, as those nlluii
as being in his hands, in tho assignment ot Edison to I n
I cannot say positively whether I saw tins aflldai
whether Mr. Qnimby merely told mo Phelps had niado i
that he proposed to lilo it; neither do I remember that
left with mo; if it wns, I sent it out to tho chief, ns us
such cases, to bo sent to tho proper room, winch, in tins

* I hnvo an impression, liowovor, that Mr. Quimby told
day or two afterward, or at least within a very short thru
ho did not file tho affidavit in question, ns ho found that

[Appendix A.]

•iter from Messrs. Porter, Lowery, So
Commissioner of Patent

New Your

on. .T. M. Tiuoiier,

Commissioner of Patents,

Washington, I). 0.

Sir: Wo liavo tlio honor to notify yon
. Prescott, that case No. 1U, by Thonui
10 inventions specially referred to and
icnt between' said Edison and Proscoti
574, and therein referred to and le I
whereas the said Edison lias also inv
monts in duiilox telegraphs, tlio descri
been lodged witli George M. Phelps for
being constructed, it is hereby ngreed
' are included in this present agnomen
'applications for patents are made tlio
1 in aceordaneo herewith, and that the i
1 the required papers therefor.” Wo are
b about to issuo in caso No. 111.

We suppose it to be inenmbent upon 1
,-our Honor by proper proofs of tlio ido:
.vitli tlioso described ns above quoted. '1
jo entirely different from that liiiulo on
lore you, to which Mr. Harrington was r
Wo nro directed by Mr. Prescott to nsl
for a hearing, at which ho will place in (
models, descriptions and other papers, b;
that the ngreomeut aforesaid applies to i
and other cases, to wit, No. 112 and 113,
eats, tlio numbers of. which will bo forv
or two, the same as it covers the cases
upon tlio hearing referred to.

Wo will also at that time, if you bn
subject, present our viows upon tlio qu<
and obligation to reccivo such proofs,
issuing tlio propor patents.

Wo respectfully request that you wi

your decision to issuo tliom jointly to Thomas A. Eiliso:
George li. Prescott ns assignees of Thomas A. Edison.

Mr, E. E. Quimliy, if in Washington, will call upon y
belinlf of Mr. Prescott to arrange for the hearing.

Yours, very respectfully,

PORTER, IiOtVREY, SOREN & ST<

Affidavit of G. M. Phelts, Jr.

County anil Stale of New York, ss.

Geobqe M. Phelps, Jr., being duly sworn, says: Tin
ing tho summer and autumn of 1871, certain models of i
and quadruples telegraph apparatus were constructi
Messrs. Edison & Prescott, under the immediate cogn
and supervision of tho deponent, as assistant to liis
G. M. Phelps ; that about April 10th, 1875, tho do;
visited tho Patent Oflico in Washington, in company wi
B. E. Quiinby, and was there authorized by the Cominii
of Patents, with tho knowledge of Exnmincr Wilber, to
ino a largo number of models on illo in tho oflico, for tl
poso of identifying tlioso made, as above, for Messrs. Edi
Prescott; that lie identified two models, marked Case's 1
112 respectively, as two of the models made under his si
sion for Messrs. Edison & Prescott, and that on tho day
ing tho examination of tho models, ho executed an al
embodying tlio identification of tho models of Cases l:
112, which affidavit ho delivered in person into tho 1m
Exaininor Wilber.

Geobqe M. PnELrs

[Appendix C.]

Sioorn Statement of Frank L. Pope.

HEW Yobic, Feb. 23, 1870.

o Edward H. Knight, Esq.,

Chairman of Committee.

Sir : X respectfully bog lcavo to submit tlio following detailed
itcmcnt respecting certain conversations between Mr. Wilber
d myself, in rofcrcnco to quadruples telegraphic inventions,
liich I have pnt in tho form of an affidavit and duly sworn to:
ate of New York, City and County of New York, ss.

Frank L. Porn, being duly sworn, deposes and says as follows :
The first conversation upon this subject took place on 1 10
tcruoon of the 7th of April, 1875, at tho office of my attorney,
:r. Livingston, So. 7 Warren, sheet, Now York. Wo went
lore at my suggestion, for tho purpose of consulting with Mi.
ivingston, in regard to a certain claim embraced m an appll-
ition of mine then before tho Office for tho re-issuo of a patent
i electric railroad signals, which claim, Mr. Wilbei, as Ex-
minor, had objected to on the ground that tho combination
"aimed was a double or analogous, use of a known arrange^
.out, while I contended that this was not the ^Winlo
railing for Mr. Livingston in liis outer room (ho being i t t o
lomont eitlior engaged in his private room oi empo
bsent, I do not now recollect which), X discussed with Mr.
Vilbortho matter of tho patentability of tlio d'spn ited . o In i.
ify own impression is strong, although of this I ca mo sp^k
vithabsoluto certainty, that tho conversation was led to turn

wtli absoluto certainty, wmc wlw v ol

■poll tho subject of qundruplox inventions, in C°"S®T,0I‘C0 ol
dr. Wilber making use of an illustration in «PP«* «
u'gumout, in substnneo as follows: Supposo a p f

‘bo asked for a quadruples apparatus, consisting merely pf
‘Stark’s old inotliod of simultaneous doublo
“tho same direction, combined with' Stoarus’s duplex; that
“would bo a enso of doublo or analogous use, and not a
It imtanlnlilA cninhinatioii ” That Mr. Wilber usod this argu¬
ment to mo on one occasion, I am certain. It is>.ll0^>
possible that it might iiavo boon at an tQ

ington, subsequent to tho ono iu Now York no. . \

In the course of a general conversation upon the vofeupte
matter which ensued, Mr. Wilber, in aMWOiito a question o^

“ cover tho point of value in quadruples tclogrnphy » (I believe
tlmt was tlio precise expression lie used), was ns.follows: -.a

“Tho combination of a receiving instrument operated by
“positivo and negative currents, irrespective of changes of
“ tension ; a receiving instrument operated by [changes of]

“ tension, irrespective of polarity ; means of reversing tho pm
“ larity, and means of increasing [and decreasing] the tension.’)

At my request ho again repeated this formula. 1 do not
now recollect whether or not I told him that I wished to mako
a memorandum of it, but I know that I did inuko such a memo¬
randum at tho moment, using for that purposo tlio back of a
folded pieco of paper taken at random from my pocket, and
which happened to bo a sheet on which Dr. Nicholson lmd
drawn for mo a diagram ol Ins quadruples, at my own ollico,
No. 3S Aresey street, only a few hours before. I do not recollect
that I lead this memorandum to Mr. AVilber, or that 1 called
his attention either to tlio memorandum itsolf or to tlio fact
of my having mado it ; and although I am very ccrtnin that it
was mado in his presence, it is quite possible that lie may not
have noticed what I was doing. I am, however, positivo that
I have given abovo almost tho exact words of Mr. AVilber
descriptive of tho point of value in tlio quudruplcx inventions,
and that no mention was mado of tho receiving instruments '

being at one end of the lin
recollection is distinct that
part of tho combination, as
noting it down, thinking tl
mention it.

One of my principal rens
remember this combination,

and tho keys at tho other. My
he line was not mentioned as a
1 hesitated lor a moment when
it perhaps it would be well to

One of my principal reasons for taking so much pains to
remember this combination, was that I .wished to see if it writ
embraced in any wny in Nicholson’s invention, tho originality
ot which he had employed mo to investigate, and of which lio
had that very morning given mo a drawing.

Mr. AVilber must bo in error in stating that I said to him on
that occasion that I “hail been employed by tlio AVostcrn
“Union to oxnmiuo as an export tho qundruplex invention:”
because, as a matter of fact, I laid up to that timo been employed
by them exclusively on other matters having no relation lo
patents or now inventions of any kind.' At tho date of this inter-
view I had not the slightest knowledge of tho contents or any
of Edison s applications, or of tlio naturo of any of his duplex
or quadruplet iuvoutlous. I bad, however, on tho previous

battery -in plncoot a rucostno m ones >•> »— . - . --

as a qundruplex, such a modified arrangement would consti-
a to a dillcroiit combination or different invention. I tlion
iskeil him if tho claims in patent 102,033 would not bo a bar to
ho issuo of a patont- in case 01), to which lie replied that lio
bought it ought not to be. X also called his attention to tlio
expression, “in tho same direction,” which occurs in tho l'1 fi¬
nable of patent 102,033, in reference to which lio said that it
was by an overeiglit on his part that tho patent lmd been
illowod to issno with this expression in it, and that it should
iithur have been struck out, or tlio method of using tho appa¬
ratus for doublo transmission in tho saino direction sot out am.
described in tho specification. Do furthermore expressed lie
opinion that tho expression referred to, being unsupported
by anything in tho specification, could not alter tho scope of tho
claims. No reference was mado by .either of us to tho previous
conversation iu Now York. My impression is that it was at

this interview of May 17tli tlmt X mentioned for tlio first time
to Mr. Wilber tlmt I wns employed by tlio Western Union Com.
puny on tlio qnndrnplox mutter, giving him tlmt ns my reason
for calling upon him to discuss tlio propriety of tlio Issue of caso
IT with the amended claims. I made a minuto of tlio conversa¬
tion reported abovo within an hour or two after its occurrence,
while it wns fresh hi my memory, mid bcliovo it to bo substan¬
tially correct. Frank L. Pope.

Subscribed and sworn to boforo mo, 1
this 23d day of February, 1870, J
William Arkoux,

Notary Public,

City and County of New Yorl;.

[Appendix D.]

Corresjiondence between Geo. B. Prescott, Lemuel W. Seu- .
reel anti Munn & Co.

New York, February Uh, 1870.

L. W. Serrell, Esq.

Pear Sir: Please lmvo tlio kindness to inform mo if you
acted as the attorney for Edison or Harrington in tlio applica¬
tion known ns ease 1J, for which Letters Patent', No. 102,033
wore issued April 27th, 1875, and in which Messrs. Munn &
Co. were originally employed as attorneys.

Yours respectfully,

Georoe B. Presoott.

LEMUEL W. SERRELL’S

AMERICAN AND FOREIGN PATENTS.

110 axd 131 Nassau Stheet,

(l*. o. liox loan.)

New York, Feb. Uh, 1870.

Geo. B. Prescott, Esq.

Dear Sir : In reply to your favor of this dato I bog to say
that I did not act as attorney for either Edison or Unrrington
in connection with caso “ H.” No action was tnkeu by mo
in that enso at all, except in sending on the balance of fee
after the application had been allowed.

Yours truly,

Lemuel'W. Serrell,

Per Walker.

New York, February 8th, 1870. ’
Lemuel W. Serrell, Esq.

Dear Sir: I am in receipt of your favor of tlio 7th hist., in
which you state that you did not act ns attorney for either
Edison or Harrington in connection with caso “ H,” and that
no action was tnkon by you in that caso at all, except in send¬
ing ou tlio bnlanco of fee after the application had been allowed.

Tlio reason why I imulo the inquiry, to which you luado the
abovo roply, was bccauso Mr. Wilber states that on tlio 21th of
April, 1S75, tho Commissioner told him that 11 lie had received
a telegram from Mr. Sorrell complaining of my (Wilber’s) delay
in not sending forward caso H, which had been proporly
amended some weeks boforo.”

Will you kindly inform mo whether you sout to tho Commis¬
sioner, or any otlior official at tho Patent Office, a tolcgram or
letter, or any other communication on tho dato mentioned, or
previously, complaining of Mr. Wilber’s delay in not sending
forward caso H, or alluding in any manner to case H ?

Yours truly,

Geo. B. Prescott.

LEMUEL W. SERRELL’S
OlHcca lor Procuring

AMERICAN AND FOREIGN PATENTS.

139 ash 121 Nassau Stsect,

(P. O. Box 4089.) Kew yomC) Feb. 8th, 1870.

Geo. B. Prescott, Esq.

Dear Sir: In reply to your favor of this date, I state tlmt
under dato of April 2-1, 1875, tlio following telegram was sent
from my offleo at request of Edison.

“ Please advise mo condition of case H o T. A. Edi*>. , hod
“April sovcnty-tlircc, and amended by lnmsoli. It trendy,
“please issue immediately and charge my account foi final
“fee,” to which tho reply came, “ Edison’s case i m next issue.
“ Chandler has paid final fee. Grhinoll, Chief Olork..

I presume this will give tho exact information desired, ns
comprises iny action and knowledge.

Yours truly,

Lemuel W. Serrell.

New York, February Will, 1870
Lemuel W. Serrell, Esq.

Dear Sir : Will you please inform mo to whom tho tclegn
of April i, 1875, containing tho following words — “Plensoi
“ v*so nio condition of Cuso II. ol T. A. Edison, filed Ap
“’seventy three, and amended by himself. If rondy, plci
“issue immediately and charge my account for final i'co” — v
addressed. Also by whom it was signed.

Yours truly,

George B. Prescott

Lemuel w. surrell’s

Onicos tor Procuring

AMERICAN AND FOREIGN PATENTS.

119 and 120 Nassau Strekt,

(P. 0. Box 4089.)

New Yoitic, February lath, 1S70

Geo. B. Prescott, Esq.

Dear Sir : Tho telegram concerning which yoiu- letter of'tl
date inquires, was directed to Commissioner of Patents nml
went over my name.

Tho copy of this telegram in my olllco is' on a Franklin (
blank. I cannot tell from memory whether or not it was sign
by mo; but, as I was not in town that date, my impression
that 1 learned of wlmt had been done when I came to town t
following Monday.

Yours truly,

Lemuel W. Sebhell.

New Yoiuc, February 8th, 187(1.

Messrs. Munn & Co.

Ocntlemn: Will you kindly inform mo whether patont 1
102, M3, dated April 27th, 1870, was issued through your fir
31- whether yonr power of attorney had been revolted by 1
Edison previously; and If so, at what timo 1
’ Yours tally,

Geohoe B. Prescott.

Office of tee “ Scientific American.” )
.Patent Office Department, [

■ No. 37 Park Bow, )

New York, February nth, 1870.
Mr. George B. Prescott.

Dear Sir: In answer to your enquiry of the Stli inst., wo
would state that our power of attorney in tho matter of the ap¬
plication upon which patent No. 102,033, dated April 27, 1875,
was issued was never revoked; but. the specification in said
patent was a substitute specification, lllud by Mr. Edison over
his own signature, March IS, 1875, without our agency or
knowledge.

Respectfully yours,

Munn & Co.

Appendix E.

Appeal of Qeorge Harrington to tho Hon.- Secretary of tho Interior.

Washington, D. O., March 20th, 1875.
To tho Honorable, the Secretary of the Interior :

;. The petition of George Harrington respectfully represents
that ho claims to have certain patents now understood to bo
ready to bo issued, issued to himself and Thomas A. Edison,
tho inventor of the improvement proposed to bo patented, in
the proportion of tlicir respective interests therein, under cer¬
tain assignments of record in tho Patent Oilice, and that a cer¬
tain Gcorgo B. Prescott also claims to have tho said letters
pntent issued to himself and the said Thomas A. Edison, by
virtuo of an assignment from the said Edison to the said Pres¬
cott, nlso-of record. That the decision of.tlio Commissioner ot
Patents has been rendered directing tho issue to the said Pres¬
cott arid Edison, which your petitioner respectfully insists would
ho coutrnry to equity and in violation of the spirit of the law
in such cases made and provided. And your petitioner lurihcr
states that he is prepared, should timo be allowed him for the
purpose, so to present his claim as to prevent wlmt lie respect¬
fully insists would bo doing a great wrong in tho promises; nml
forasmuch ns your orator is advised that under tho Act of Con-
gress in this connection, tho Commissioner of Patents is, in tho
oxorciso of .bis notvor. ns such, subiect to the direction ol' the

idcring now the various statements
, (t) made ns proof of tlio identity,
mcs clash. Tfor instance, Prescott e
s of changing tlio tension shown
ibed in tlio specillcntions of the pat<
>n of a currant is dependent upon
nee of tlio liuttcry, and can only lio
r diminishing the number of cells n
.•e, as his “only” means of changing
nd not in IT, ho argues that tlio cln
Dnstnied by the speciflcntion of 9!)
i samor 'l'liia lino of argiiuioiit Mr.
ivovor, denying in oflect that tliere i
dishing tliis result, saying, “ tli
gth of tlio current may bo prodnei
creasing and decreasing tlio strengt

tt realized tlio t
, So, to give tin
{?oos on to' say,
bilitv of sending

Iii case H, u substantially as ami for tno
». i a.' arranged to solid two in opposite direct i
s no proof • whatever - 'of this alleged conncctioi
; in fact, every reason, ns shown, to believe tie
licit connection. If they were the same, how c
s avoid the danger of raising a suspicion of th
»e successor of II, and was intended to cnilmi
nils the 41 fundamental principle,” liow carer
ship was concealed, and how skilfully the clan
> that “ fundamental principle” ub applied to s
in one dircction.(tt) It will bo noticed that no
ted in IK) which could be rejected on cnso H.
loth series of applications, and could lind no
ing any claims in 90 on case II, though I did ti
jeet several of the series 91 to 100 on somo of tl
' Attention is specially called to this distinct
e two cases, that their claims arc entirely disti
iiiv inventor having the two applications pcndi

of tllOIII. . ;

ovimi admitting tlio statements nmilu ljy
>f “ fundnmcntql principle,” tliat.tlio allow-
itillable, bntwns tlio tiling indicated to lio
■instances, by tlio law ami facts, anil Unit

i caso.ll, it will bo seen that nmlcr no cir-
idor tlio speeilio grounds of the charges,
more general grounds, arc my actions oil

charges iii relation ,lo caso 111 ,. it is neees-,
i sliould bo proved— , ,
wrs tiled in, this oflieo, showing that lit
Mentions in. which an intorcsl was trails-

irovcn, no action of niino was wrong,
ipccillcally, identified in the Kilison and
it could only, be , brought, under tlio oporri-
tyovidonco that' it .was' pile of the cases
f which , tlio papers were in' the liniiilsof
niiiifnctiiro of models.
ilies that ho examined tlio models in tliis
models of 111 and 112 as tlio models of
ml that lie made an aflldhvit to that fact,

i paper of no common importance. It was
i certain rights alleged to belong to Mr.
go the otllee with a knowledge thereof to
To .legally do. this, its regular tiling in and
eo were necessary ; it must in these cases,
o-olllco. records, just as testimony ninny
lines part of tlio record. Yet with all, this
; to the paper itself, and equally, pith,' its
tnteinent tlmt ho, handed it toiuo.is all the
tiling., If it had been handed, to mo I
; iii ouo of tlio, (lies, concerned, nnd put iu
i-roferoneo thereto. It is not in either of

uUiisHoii iii regular connio, 'about llio 20th of May,
of Mil Wltbor’a oitmlnibto inipurtbility tor tlio ‘Brat
to .lt In any doenniotit rolalliig to' tlila conlrovorey
i tlio Commlsalonar, upon tlio meaning of “ rnnt lclo-

" of'niiy klmll still loss an "ofllclnl 'notice.” In point
Dither, by Mr. Prescott or tils' ooiin'sol until It mndo iii
i of tho eoimsol for Kdison anil Harrington, after tho

i Mr. Qnimby says that within a fow days the;
after lie received it from tlio Commissioner. 'To hnrmoni
Phelps and Qnimby then, .there shouh il h '« uvitl lence t that > .
Pnin mission or received it "from me. to there any butn o
dunce 1 No, on tlio other hand, the Commissioner testifies th
he does not remember to have ever had the paper at a 1
oitteo rnlcs forbid tlio return of papers tiled. [s it h U )
then would have returned so important a paper to tlio paitii
csneciallv preserving no record ot it in the oilleoi ^ hat dr
1,0 himself say on this point? That if it hml been handed h>
lie would lmvo sent it to tlio Oliief Clerk ns usual,” to ho sc
to the in oner 1*00111. So, if it had been in tlio possession o t
officer from * whoni Mr! Q.iimby reived it it would In,
reached me, and bo now in the Hie ol eithoi 111 oi .

Hut where is it! Mr. Qnimby says tin gave it, .witho
mners to Messrs. rortcr, Lowrcy, Sorcn & Stone, in u no.se p
Son’” it still roniniiis. Thus is shown the oxtrcnio impr
ability of that allidavit having ever been tiled in this ,n
Tlint improbability is rendered greater by o cr facts. - U o
i>iIPl, n i-ho testillcil here, and who nuido tho nllhlnv it, is
the M r. Phelps tilluded to in the Kdison & Prescott nssigiimt
hut the son thereof. Then the affidavit lie made s onlj sec ^
ary evidence, mid* legally not good, the nbsentes
deuce of (he Phelps • referred to in the nssif
niiiiccuniitcd foi*. Mr. Timelier says, 1 lui 1

“however, that Mr. Qnimby told » dnj nr_t o It
“ atlcnstwithin iv very short tunc, Hint ho dul not flic >“

“ dnivlt in question,' ns lie found it was not tho JJ1- J 1 “IJ.j ■
“was with him who mndo tho models, n ^

“ either rntlior or son, l do not remember which-
these circumstances together, and they o emlj hIiow t
young Mr. Phelps is mistaken, that Hie aniilniit mi s t i
tiled in this oflice, and tlioy show why it w ns not llh' h
and why it is in possession of a law Arm ml he» York Utj
did, however, receive information from some out , j ‘ '
either Mr. Plielps or Mr. Qiiimby, that 112 and 118 had bce1
would bo properly identified. I theicupoiisuapemjed ^
cases; and have retained them, : This was not done lognH
iii' itiirsmiiicb'of liny "ini thorlty any where jn Mio-ofljcei “>i tl
in lint tn Hits ilav so far nsl cau nseertmn,' any papeis oi
dimed Med in tins office which, would warrant the ollleo hj i
nig those eases to Kdison nml Pie cott jointly Koi
which any eoiu t would regard for a iiiouiei t f tho oases
brought before such court, the only reason lor t o non issm
being tlio question of title, lho siispens on hns
cfleetivo only through tho concurrence the rein. ol I o at m
prosecuting the ernes. It shows, however, that I v ins dispc
so far as I could, to proservo any equitable lights of Mi. i
colt’s when informed of them. . .. . ,0 '

The intrinsic evidence of the three cases, 11 , 1U
' in support of my actions and liupressious is veij 8 fc*

It will bo noticed tlmt I have considered these charges (in
both cases) ns though it woro pari tof iny bus '!?»“ |o oxnmhio
into questions of title, to see that thcra wero no eimflictiiig
Horn torT. A. Edison. Tlieso woro tlio Edison applications Nos. 04, 00, 00, 01,
.00,00 mid 100. 1 got from lilra tlio impression that tholo would lio othors lo
compote s sorlcs, Including both differential nnd bridge 'lundrnploxos.

On January SCtli, 1815, Mr. Sorroll lllod case No. Ulj nnothor one of tho
. “sorics " which Mr. Wilbor liiul got "tho Impression » would ho completed by
tho addition ot other applications for similar inventions, “ including both dit-
"forontlnl nnd hri-lgo ipiadruploscs." Acting subsequently upon Hint Im.
"proBslon," Mr. Wilbor very properly sent cuso No. Ill to tho commissioner
with the rest ot tlio Horios to which It belonged. ' . , .

On January 29, 1870,' Mr. Wilbor, in' bin report to tho Commissioner. says:
•| Tho assignment to Mr. Prescott, which bus been endorsed upon tlio tiles of cer¬
tain or these ennos (nil excepting No. 112)' won raudo August 10, 1811. ' In enu-
morallng these cnscs, nt the head ot his report,’ Wilber omits to mention cnscs J l
nud 111, although lie woll know Hint tlio nsslgnincnt to Prescott covered them ns
well ns tlio others' i - . . . .

Messrs. Porter, I-owroy, Soron ,t Stone, counsel tor Mr. Prescott, in a
tho Commissioner dated March 20th, 1816 (cute Appendix A), expressly not, lied
him that enso 111, among others, wns for an application in which Mr. 1 Iroscott
claimed ea Interest, under tho

in support of his ctalm' might bo brought forward, nnd roptesihig that tho said

interests; in fact, tlmt tins question of title wero one coining
within my jurisdiction. I have been- perfectly willing toilo
this, tlio actions in tiio eases being so correct. The fact, how-

torost was convoyed to mo liy llm assignment ot Thomas A. Edison, ilntml Aog.
10th, 1874, and recorded Aug. 20th, 1874, Libor It. 18, ]i. 02, Transfers ot Patents;
together with a digest ot tho subject-matter contained in certain applications for

In which, by virtue of tho terms of said assignment, I linro also on interest.

S it still, nml mny (lo wlint . bo. pleases with it, .oven though
name is not printed thoroon.(33)

i conclusion, 1 tlosiro tosolmimly stnto that, in my nctions
Imsc mutters, mid in other complicated matters with which
ivo had to deal, I liuvo endeavored to not fairly mid without
ion al bins or favor; that it 1ms been to mo personally a
ter of indilVereiico which. should como out abend in tho
tie Fight.'' In none of injunctions on the cases involved
not involved in that contest have 1 paid the slightest
ml to tho question of wlmt. interests would he bonelitcd or
red. I have endeavored, to •iimiiitnin friendly relations
i both sidos and to entertain no hostility to either. 1 eer¬
ily have never been hostilo to . the1 interests wliieli it is now
med were injured by tho issue of these: patents. .... If, I hurt,
a I certainly should not have so readily recoin mended tho
dps extensions, or granted re-issues : of the. Phelps, tho
ito and ltmidnll, the Stearns, and other patents, all of which
new belonged to tho Western Union, or to organizations
trolled in fact by it, and which re-issues were designed in
ry instance to injure tho interests of people I wns person-

not taken such things into a
what is tho right thing to bo
If, in tho issue or theso cn
iii liny wny, I protest it has
mine, or of tho Patent Oil!
such injury elsowhor?.

Rcspeetfnll

mentioned re-issues. In fool, furtli
llio abovo mentioned extensions; ro
li the Western tbium, or lo organ!
re-issues were designed in every inafu
mu personally on <jood terms with."

ret would scoin to Indicnlo Hint ho thought tho tillo to properly in homes wns
Si by tho nnmc or Mimes tho grantor lmd inserted ot tho head of llio dcscrip-
mid ivritlon in tho body ot tlio cortlllc.Ho of llio grant. It eerloinly cannot

ml of Ids property which can linvo no bash other than nucli li holiof. Tho
bs printed there sottlo noquosllou of title. If tho complainant has liy law any
i, tillo, or interest In tho horse, no net of tho defendant can iltvest him of such

id in tho dood of conveyance of tho liorao. Tho courts stand ready to protect
anil his rights iviil bo protected by thorn as fully and comploloty ns though

I.— Tito Commissioner not ouly decided Hint llio offleo must tnko tho legal rcc-
but that tho legal record showed that the inventions bolongcd to Edison anil
icolt, as will bo soon by tliu following oxiract front tho Commissioner's decision t

ecutcd tho assignment to Prescott, and. ho nlono had liio right to* convoy any
th nil duo formality when, in 187-1, ho convoyed an entire half interest In tho

liovo, with ported certainty that If tho necessary formalities have been -ob-
rvctl, the Commissioner must necessarily order the patents to issue to Edison and
■escolt" Wilber, In Issillug tho patents to Edison and Harrington, thus not

Indicate a whirr knowledge of tologn
Unit his profound InvesUgntlons into
nature of Ills ofHco do not provont 1
all that is pnsslng in tho groat worli

Mr. Wilber's statement, so cni|
to tho interests which it Is now els
cuts" (for eases Hand lit to Edi
have so readily recommended the Phi
the Foote and llandoll, the Stearns in
or omclal power according to -perst

Tho recipients of tho above uicnl
be congratulated iqion llio feet thill
but wo reel sure that Ihoy, os well l

Issue of parents strictly iu accordiu:
without reganl to pcnroual or other

' I

giefoM the ®0wnu5siouet of fateuts.

IN TUE MATTER

The Application of George B, Prescott ami Thomas
A. Edison for Letters Patent, dated Autjwtt imu,
1874 : opposed by George Harrington, by Petition
dated January 23d, 1875.

Argument for Mr. Prescott.

-4-: -

Matter

The Application's of Thomas A.
Edison and George B. Prescott,
of August lOtli, 1874, for Let¬
ters Patent to Tliomns A. Edi¬
son and George B. Prescott;
opposed by George Harrington,
by petition dated January 28d,
1876.

TnE records of tho Patent Office material to bo
sidored are :

1st Agreement— George Harrington and Thomas A.
Edison, dated April 4tb, 1871, recorded May Oth, 1871,
Libor U 18, p. 412, Transfers of Patents.

2d. Assignment — Thomas A. Edison lo George
B. Prescott, dated August 10th, 1874, rreorded

-a

August 20tli, 1874, Libor .It 18, p. 62, Transfers of
Patents.

8(1. Various specifications in the applications of Edi¬
son, Nos. 0-1, 05, fid, 07, 08, 00, 100 ami 112.

4th. Power of attorney. — Thomas A. Kilson, to Jay
Gould, dated January 0th, 1875, recorded
1875.

5th. Petition of' Gcorgo Harrington, January 28d,
1875, and letter of Thomas A Edison of the same

A portion of these records arc printed ns an appen¬
dix to these points.

On the 10th of August, 1704, Edison assigned (by
sprcinl reference to die numbers of the applications)
one undivided half interest in iho whole or each or the
inventions described in the specifications attached to
the above-named applications, with special stipula¬
tions that the letters patent, when granted, should
belong to tin in jointly ; and rrrpu sling and authorizing
tho Commissioner of Patents to issue the patents to
Edison and Prercotl, jointly, as assignees of Edison.

In consideration of this assignment Prescott pnid
and expended a large sum of money.

At, and subsequent to, this dale, Prescott and Edison
were in treaty with the Western Union Telegraph
Company for the sale of these inventions, and on tho
10th of December, Edison received $6,000, on account
of iho purchase from that company, although tho price
line! not been definitely fixed.

On the 80th of December, Edison and Prescott pro¬
posed a sum as full compensation, which was subse¬
quently, and before any withdrawal of the ofl'er, accept¬
ed by tho company..

After this acceptance it was learned that Edison
had, in breach of his contract, given tho power of at¬
torney to Jay Gould; still later, Mr. Prescott was
made aware of the application of Harrington, and, for
the first time, of the pretence that tho Harrington
agreement uovered tlioso inventions.

Mr. Prescott is advised that the original application
and request, by Edison stand, and cannot bo revoked
by him, being based upon consideration paid.

Tho attention of his Honor, the Commissioner of
Patents, is asked to the following general propositions,
which arc discussed more at length in the following
points:

1. The legal title to one-lmlf interest in the inventions
in question is in M. Prescott, and therefore all pre¬
sumptions arc in his favor, and tho entire burden is
upon anyone who seeks to impeach that title.

2. Mr. .lliiiTingUm must show, beyond doubt, that
the paper on which lie relies has taken legal effect
upon those inventions. If tiny doubt remains the
legal title must stand, with nil the incidents attending
it, or arising out of the contract with Edison, to wit:
that tho patent shall bo'ltold by them (li. & P.) jointly,
and not be dealt with by either, except as permitted
by tho terms on which Prescott accepted tho assign¬
ment, and parted with consideration.

8. Tho agreement of Harrington and Edison is
not by its terms an assignment of any such inventions
as these; that, even wero it broad onough by its terms,
still it cannot alToct these specific inventions ns nn assign¬
ment, because nt tho date of its delivery these inventions
dul not exist, and could uot, therefore, bo assigned.

4'. Tho inventions in question being improve¬
ments upon a method of transmitting telegraphic

messages known ns the 11 Duplex/ do not come within
the terms of that agreement, winch relates solely to
an ontirely different subject, viz.: “automatic or fast
telegraphy."

6. That this ollico being without the powers and
functions requisite to deoidc questions of conflicting
equities, the proper, prudent, and just conrsc for the
Commissioner is to issue patents to thoso possessing
the legal title, to wit: Edison and Prescott, leaving such
persons ns may think they have equities to seek their
romodies in a court of competent jurisdiction.

ono half, of tho whole intorest, and to make and
perform a contract to hold the other halt himself
The alternative is that he then intended to practice
false pretences and commit a fraud. Wo do nol
charge this, and we presume he will not assert it,
/:!b vi termini his conveyance implies an assurance
that he had not previously convoyed two-thirds tc
Harrington.

These clear implications, from his nets, sup,
ported by his positivo averment, cannot be dis¬
placed by a subsequent declaration of an undo
R mill ■•nrrniinnn-iiimiivssi.lll." lliado Ulldcr circUIlV

— Wbntevor else may badoubtful,l\vo things are certain,
viz. (1.) That when Edison delivered tho assign¬
ment to Prescott, ho intended to transfer, nud sup¬
posed that he did transfer, one-half the entire in¬
terest in tho specific inventions described in affi¬
davits Nos. 91, 95, 90, 97, 95, 99, 100 and 112, now
in question, nud (2.) That lie did not, at that time,
understand that ho had previously transferred
any intorest in thoso inventions.

Tho assignment to Prescott is not of one-hall
Edison’s intorest, but of 11 ono undivided half-part
of 11 the right, title and interest, of every character,
in, to, and under, and connected with the aforemen¬
tioned inventions, and letters patent oi i

granted," and it “authorizes and requests tho Com¬
missioner of Patents to issue tho said lcltors pa-
tout to Thomas A. Edison and George B. Pres¬
cott," as assignees, &o.

Thus it is made clear that, notwithstanding tho
agreement with Harrington, Edison understood
himself to bo the owner of. and free to convav tho

II.— Wlion tho assignment to Prescott was made,
nearly Tour years after the date or Hint to Har-
ringtou, inventions had ken made and completed,
ami wore in form to be definitely desoribod and
identified. Tlio inohonto right to a monopoly,
whioli tlio iuvontor then for tbo first time nenuir-

ed, was propel ty capable of being the subject of
bargain and sale, and the words used in the assign¬
ment to Prescott were apt words to effect, and did
efl'eot quoad hoc a transfer of that inchoate right,
“Tlio itiacnmcr of o new mul useful invention In vratn] by

tlio law rcqilirPM, mul Fitrgcmhl |(o.«h>hsciI tills Inelionto right at
ilio tlmo of tlio nHHlgnmcnt. Tho discovery lind lieon made, anil

tlio Inngimgo of I lio assign men t tlmt it wn» intended to operate
i«l»on tho jierfccl legal titto wliich Fitzgerald tlicn lind a lawful

•uresis which lie actually possessed. Tlio assignment requests
tlio party lias acquired 'an inelionto right to it, and tho power to

meat of his whole Interest, wholher oxccutcri before or after tho
patent issued, Is equally within tho provisions of tlio Mi of

From tli is authority, if authority was needed, It
is clear that two things only aro contemplated by
the patent laws ns subject to bargain nnd sale.
— 1st, Tlio inchoate right to obtain a patent (wliich
right docs not exist until an invention or dis¬
covery lias been made sufficiently complotc to bo
described), and, 2d, llie letters patent them¬
selves. It also appears that a valid assignment of
the inelionto right transfers the right in tlio patent
ivlicn obtained.

What right touching tlicso inventions did
Edison possess at tlio dnlo of tlio assignment to
Harrington ? The right to m alee these inven-
ions, if lie could, and no more. Tlmt being tlio
inly right lie possessed, ho could transfer no
itlicr to Harrington. Ho did not, therefore,
rnnsfor then any right touching them ; nnd, being
till possessed of all the rights lie ever lmd to
hem, on August 19, 1874, ho transferred an inter-
iBt to Prescott, who took immediately a legal title

to bo ft bnlf owner in the letters potent, wliou

As was said by the Supremo Court, in Gay-
lor v. Wilder, “it appears by the language of tlie
assignment llmt it was intended to operate upon
(lie perfect legal title which Fitzgerald (Edison)
then had a lawful right to obtain, ns well ns upon
the imperfect and inchoate interest which he actual¬
ly possessed.”

r. — It being equally indisputable that the legal right
is in Prescott, and llmt the Patent Oflicc is not
equipped to exercise equitable jurisdiction, or to
measure conflicting equities, it is submitted con¬
fidently that the Commissioner must bo guided by
tlinl fundamental principle of our jurisprudence
which gives possession under the legal title, leav¬
ing equitable claimants to contest their rights ns
plaintiffs. If Harrington 1ms any interest, of which
the law can lake notice, his proper forum is in
the courts. There are numerous reasons why
prudence anil impartiality require that the patent
should bo issued to Edison and Prescott, in whoso
joint custody (in view of their contract on record,
forbidding either to licence or sell without the con¬
sent of tho other, and of the known conflict of in¬
terest between them which prevents any clinnco
of collusion), they would be safely held to an¬
swer the claims of Harrington or whoever else
may bo interested. On tho contrary, being issued
to Edison and Harrington, nr to Edison alone,
very embarrassing questions might arise in re¬
spect to licenses, assignments or grants clandes¬
tinely made by them, or by Mr. Edison’s attorney,
Mr. Jay Gould, These considerations will bo
discussed more fully under another point.

V- — So far wo have, for argument’s sake, treated the as¬
signment to Harrington as if it might bo construed
so ns to have reference to tho inventions in question.
Such is not tho fair construction of that instru¬
ment. Tho languago nindo uso of is wholly in¬
applicable to theso inventions cxcopt by violent
perversion. Moreover, the instrument does not
purport to assign future improvements upon any¬
thing oxccpt what is there numod as “Automatic
Telegraphy Mechanical Printers."

That assigr.mcut recites (us matter of fact) that
Edison did (at somo former timo) ngroo to invent
and construct * * * full and complete sots of
instruments and machinery, that should * *

develop into practical uso tho Lillie, or other sys¬
tem of automatic or fast system of telegraphy,
and subsequently to iinprovo and perfect such in¬
struments and machinery by adding thereto, from
time to time, such further inventions as oxperionoo
should demand, and my ability as nil inventor and
electrician might suggest; * * # il10 said in¬
vention and improvements to be tho joint property
of said Harrington and myself” * * * .

Having thus recited a former promise to make
certain inventions (if possible), tho instrument pro¬
ceeds to deal in presenti with matters then in ex¬
istence, under the designation of “said inven¬
tions,’’ os follows :

“Now,1 therefore, bo it known * * * I, Thomas
A. Edison, do * * * hcroby assign, sot over and
convey to him, said Harrington, two-thirds, in
interest, of all my said inventions, including therein
all my inventions of mechanical or copying printers,
and of all tho patents for all such inventions and
printers, whether already issued, applied for, or
to 'be hereafter appliod for, and of all and what¬
soever of my inventions and improvements, made
or to bo made, that are or may he applicable to
automatic telegraphy mechanical printers." '

This is the substance of tlmt part of the paper
licit operates ns a conveyance. It will bo seen
at its lnngungo is appropriate for a enso in which
volitions had already hem made, in pursuance of
oh a prior arrangement us is described in the
aitnl elnuso ; anil its lnngungo is npt for the
ftnnt conveyance of such existing inventions,
ilh the addition of a stipulation to convey, in
lure, certain other specified improvements, to wit :
improvements made or to bo made that are or
ay be applicable to automatic telegraphy me-
innicnl printers."

Upon this paper, ns it rends, Ilnrrington could
at justly claim from lidisou an interest in any
ivention notcomplete at the limbing of the agree-
iOnt, except inventions relating to the mechanical
rimers used in automatic telegraphy. It will
iso bo seen that the whole contract is limited to
tber the “ Little " system, or any other system of
ntomntic or fast telegraphy , and to certain printers
seful in that system or telegraphy ; which printers
re by a phrase which perfectly distinguishes
nem, called “Automatic telegraphy mechanical
rimers.”

It is understood that Harrington’s clniiii is based
olely upon a rending, or rather misreading, of these
vords : “ Littlo's system, or other system of auto-
natio or fast telegraphy," which distributes them
nto tlirco groups, representing three different sys-
ems (instead of one), which may stand and be
jpernted independently of each other, namely :

(1.) The Little systom.

(2.) Automatic systom.

(8.) Other fast systom.

Those terms must have a reasonable construc¬
tion. The object of tho construction is to ascer¬
tain the meaning of the parties at the lime they
made use of the terms.

In 1871 the term "Automatic or fast telegraphy”
had already taken a firm hold in the literature of

the telegraph, and had extended into common ui
but at that timo it is helioved that the term “ I
plox" was ouliruly unknown, at least outaido
the Patent Ollicc, and that tho term 11 Omul

tem. The Morse system, aided by tlio duplex or
qnadruplex instruments, is a “ fast system”, pro-
oisoly ns a railroad train running at a uniform rate
of speed is mado faster or slower, according to tlio
number of cars it contains, or lire number of pas¬
sengers it transports.

If tlio Erio canal sliould bo widened so as to
accommodate ten boats abreast would it be a
faster mode of travel than now ? Is n horse-race,
in which ten horses run the course together in ten
minutes, faster than a race over the snme course
which is run by another and fleeter horse in two
minutes?

It seems that counsel ought not to bo called
upon to discuss, nor required to occupy the atten¬
tion of the Commissioner with tlio hearing of ar¬
guments upon, n point so palpable as this.

The following extended extracts from public
journals and books relating to “ fast " telegraphy,
and tlio various forms of the multiple method, as
well as from the contracts of Harrington himself,
make a demonstration as utterly conclusive as is
possible upoir any question, that the term “ fast
telegraphy ” is a" synonym for, and by common
acceptation includes and is limited to, “Automatic
telegraphy." 'l'lio term “fast" is evidently « <?«•
scriptive epithet intended, hy its universal asso¬
ciation with the appropriate scientific lam “ Auto¬
matic to emphasize what its friaids consider the
distinctive men t of the Automatic system.

So oxtonded lias been this use of tlio worn
“ fast," and so complclo the ncquicsccnoe of the
newspapers and tlio public, that if it were a case
of trade-mark, under the common law, the owners

THE AUTOMATIC OK EAST SYSTEM.

Bain’s New System.

“ Aflor the holes nro made, the machine will transmit
from 600 to 1,000 impressions in a minute."

Yol. 4 of Henry O’Reilly’s Scrap Book, at the library
of the New York Historical Society, contains tlio
accompanying extract from the Rochester Daily
American, March 22, 1848.

“Mr. Bain is the inventor of three instruments, all
of which Mr. O’Reilly has tlio light of using in this
country. One of these, the “fast instrument," is capa¬
ble of transmitting in an hour a communication that
would fill eight or ten columns of an ordinary sized
newspaper.

Tlio same paper, in an editorial of December 6, 1848,
calls it “ Bain’s rapid telegraph,” and in another plaeo
“ Bain’s rapid mode.”

From the Abbo Moigno’s description of Bain’s Auto¬
matic Chemical Telegraph. Bulletin de la Society
d.' Encouragement pour V Industrie Rationale, May 8,
1860, p. 286* The Electro Telegraph, By Lau¬
rence Turnbull, Philadelphia, 1868.

rolls itself with extreme rapidity; tho plate, drawn by a
olock-liko movement, turns also with great quickness.
At 45 seconds the 1,200 letters composing this page
appear very neatly drawn on the disks of tho chemical
paper, and were thus faithfully reproduced, and would
have gone two or three hundred leagues farther with¬
out any difficulty. *****

“ These are the advantages which the author attrib-
utes to Ids system of electro chemical telegraph : 1st.
More economy and simplicity in the primitive con¬
struction ; 2d. Mure rapidity in the transmission of the
dispatches ; a single wire with a go. d insulator can
transmit 1,200 letters a minute, or twenty letters a
second, that is, ten times more than is customary."

From The lileclro-Magnetic Teleyruph. By Laurence
Turnbull: Philadelphia, 1853, page Si).

Bain’s Electro-chemical Telegraph. * * *

“Transmitted through groups of perforations, forming
signs, which are recorded at the receiving station by
pulsations of the clcctiie current acting on chemically
prepared paper * * » theieby effecting

the transmission of a communication to one or a plurality
of distant receiving stations with far greater rapidity than
by any other mode.”

Bccords of the Directors of the American Tolegrnph
Company, March 1, 1861.

“ Humaston Invention, Col. Leffems.

"An opposition tolegrnph lino between Boston and
"Washington is proposed to bo put up, of which Col.
M. Lefferts is tho head. Ho proposes to use a fast
system, an improvement on tho Bain principle."

16-

From The JSlectrie Telegraph. By Robert Sabine:
London, 1867, p. 166.

• Wheatstone’s Automatic Telegraph : “ This excellent
method is said to combine tho advantages of a five¬
fold sjiecd in transmission, with a considerably grentcr
security for correctness and legibility."

From The Kleclric Telegraph. By Robert Sabine : Lon¬
don, 1867, p. 178.

Bain’s Chemical Telegraph.

“The entire message (282 words) was written in full
in the presence of the committee, each word being
spelled completely and without abridgment, in fifty-
two seconds, being at the average rate of five words and
four-tenths per second * * * a distance of

upwards of a thousand miles at the rate of 10,600 words
per hour."

Automatic Telegraphy. By Alex. Bain. The Tele¬
grapher, vol. iv., p. 129, Dec. 14, 1867.

“ Automatic telogrnphy consists of methods of trans¬
mitting and receiving previously composed messages
between distant places by menus of self-acting machin¬
ery, in connection with electric currents, and where
properly carried out, it is distinguished from common
telegraphy by the great celerity with which messages can be
sent and received, ns well as by tho great accuracy it
insures in its transmission and reception of intelli¬
gence.

From The Telegrapher, vol. iv., p. 273, April 18, 1868.
Wheatstone’s Automatic Telegraph.

“This instrument is now being worked with much.

success 1) y tuo Elcctrio Telegraph Company, and the
rale of speed attained by its use is perfectly marvelous
The messages are punched out upon strips of paper,
and are sent with a rapidity far exceeding the manipu¬
lative shill of the most experienced operator.”

From The Annual Jieportof the Western Union Tele¬
graph Company, 1860.

“ Tho patent for the automatic or fast system is owned
by the Western Union Co., Ac., It c.”

From Ihe telegrapher, vol. vi., p. 100, February 5
1870. letter of D. 11. Crttig.

“ Mr. little and friends have cheerfully awarded t<
Bain the credit of boing the first to conceive of t
"fust ” or automatic process of telegraphing ; but whilst
Bain’s process was ingenious it was not practical ; ant
the difference (which Mr. Westbrook wishes to lmvt
stated) between Bain and little is precisely tho same
is between little and Westbrook, to wit : little’s Sys¬
tem of Automatic Telegraphy is thoroughly practical,
nuch more correct and reliable, ami ten it tig
imes more rapid than the Morse hand-key system."

From The Jleport of the National Telegraph Company,
18G9, pp. 4 and 6.

“Tho little automatic or fast system." * *

" The yiut system." 9 9 “ This system of send¬
ing messages by telegraph, invented by George little."

“ A- practical system of ‘ fast ’ or 1 automatic tclo-
graph,’ ” page 8.

“ Bonelli (in 1804) introduced the fust system of auto¬
matic telegraphy ,” page 0.

“ Bain-Ilumaston, ‘machinery for fast or automatic
telegraphy.’ ” page 10.

From Professor Morse's Report. Journal of the Tele¬
graph, vol. iii., p. 87, January 16, 1870.

11 The reason why automatic telegraphy has not been
i practical success is not duo to any fnilure to transmit
and record rapidly and accurately, but to tho want of
somo rapid, economical mode of preparing the matter
for transmission. It is in this direction wo nro to look
Ibr a solution of the problem. Tho other part— that
of transmitting and recording at a very rapid rate — has
been repeatedly demonstrated."

“ Now York, March 8, 1870.

“ Dear Sir— In your note to me, of tho 8d instant,
ou apprise me that Mr. C. Westbrook lays olnitn to
he invention of the use of the indented or embossed
inper of the Morse Jtcgistcr for rapid automatic trails-
lissivn, and this claim, you say, you denied him on
'hat seemed to you ‘sufficient data to support the
eninl.’ Your request for ‘enlightenment on tho
ibjcct ’ I cheerfully comply with, since it will, I think,
illy sustain you in your position."

rom The Telegrapher, vol. vi., p. 408, August 18, 1870.

Automatic Telegraphy. •

“In answer to several recent inquiries relative to
ie ‘fast system of telegraphy,’ ol which so much was
id six or eight months ago by Mr. D. II. Craig, and
Inch lias been so much dcoried by parties whoso in-

to rests its success would jeopardize, wo arc informed
that Mr. Craig and his associate arc still sanguino ol
its success. Should it realize one-half of the advan¬
tages claimed it cannot fail In have an important influ¬
ence ill the future of scientific and practical telegraphy
everywhere."

Extract from a letter by IX H. Craig, published iu the
New York Herald, August 20th, 1870, under title
of Automatic nr Fast Telegraphy.

“Tlie interest you have evinced in the subject ol
automatic telegraphy leads me to believo that you and
your readers will he gratified to learn what lias been
accomplished during the last six or eight months in
the development of the Lillk system of fast telegraphy.

“We have just commenced to mnke tests of the elec¬
trical condition of our line and tho capabilities. of-our
mimnatitrmuchmery for ‘fast telegraphy.' 'V . ' ! 'n.

A description of the Wheatstone Automatic Telegraph,
forwarded by Henry Weaver, Esq., of London, to
the Western Union Telegraph Company, contains
the accompanying. — 1870.

“Sin Ciiahi.es WiiKATOTO.s-n’s limn Si-nun Tkle-

Moses G. Farmer on Automatic Telogrnphy.— Sait
American, vol. xxiii., p. 888, Dee. 17th, 1870
“In order to nttiiiu tho exceptionally high rt
speed which lias been experimentally obtained upo
automatic lino recently constructed between Now ’
and Washington, * * * why not employ i

kind of an automatic system to transmit tho mess
and employ the l’helps’, House, or some other pri
to simply copy them 7 "

Automatic Telegraphy, by D. If. Craig.— Seie
American, vol. xxiv., No. 1, p. 4, January 1, 187
“I have read with attention the speculations of
ressor Fnrmcr and Mr. Prescotl, in recent numbe
the Scientific American, upon the subject of autor
ir fust' telegraphy.

“ Mr. Prescott's statement, assented to by Prof,
nor, that ’ the speed of automatic transmission v
nverscly ns tho squnro of the length of tho lin
loubtlcss good ‘science,’ as they understand it,
iriowed in tho light of our cxpcrienco it is arrant
'enso, as all our tests go unerringly to prove that,
ho Little system of automatic or -fast' telegraphy
ongcr the oireuit tho better the work.

“Tho difficulty with Air. Prescott, and all i
rnrties who have strivon so vigorously to writo d
lutomntic telegraphy, is, that through ignoranci
lesign, they liavo utterly ignored tho important
hat Mr. Little uses electricity, under entirely diffc
sonditioiis from what it was ever before used by
icrson who bus experimented in fast telegraphy, ni
s to this fact, and not at all to the fact that wo ha
mperior line, llint wo trunsmit and record correctly 1
cords per minute, or 00,000 words per hour, over a >

“The Little system of fast telegaphy, having bcon
satisfactorily tested, in an experimental way, is now
about to bo placed before tho public of Washington
and Now York and intermediate cities for tho transac¬
tion of public business, and it is not doubted by any-
0110 wiio understands the principles which govern tho
new system that it is destined to offeot a complete
revolution in the whole telegraph and postal business
of the country.”

Automatic Telegraphy. — The Whcatslono and Siemen's
System. — The Telegrapher, vol. vii., p. 899.— -Au¬
gust 6, 1871.

“In common with most other systems of automatic
or fust speed telegraphs, Professor Wheatstone employs
three distinct machines — the perforator- the trans¬
mitter, and the receptor.”

h'roui The Mechanic's Magazine. Loudon, December 80,
1871 ; vol. xcv., No. 2,405, page 510.

“ Wheatstone's Automatic System.

“ In tho ordinary systoin of telegraphy, on the most
rapid instruments in use, tho limit of speed is not that
of tho capability of tho instrument itself to transmit
tho signs sont, but depends solely upon tho skill of tlm
operator in rapidly moving tho key or koys used to-
transmit tho signals; and it will bo evident that if it
is required to send a greater number of words in a
given timo than one operator is cnpablo of sending, wo
must increase tho numbor of operators — necessitating
in tho ordinary system an increased numbor of wires
and instruments. Tho automatic system, by making
tho formation of the different signs independent of

their transmission, does away, within eortnin limits,
with .tho necessity of increasing tho number of wires
and instruments along with tho increase of tho opera-

From The Journal of the Society of Telegraph Engineers.
London, 1872 ; vol. i., No. 1, page 39.— March 18,
mvo 1

“Tho following paper on 1 Automatic Telogmphs 1
was read by Mr. B. S. Ciillcy :

“ The advantages of machine ovor hand lubor are as
apparent in telegraphy as in any other mechanical art,
even without regarding speed for signals mechanically
sent, will always he bettor formed, and more legible,
than tlioso sont by the key.

“But wo are able to show, from experience, that
besides assuring better signals, a greatly enhanced sped
can be attained by the automatic system."

Wheatstone’s Automatic Tolegrapli System. — Tela-
graphic Journal. London, December, 1872.

“Automatic instruments have bcon devised for tele¬
graphy for the same reasons as have influenced tlm
introduction or machinery, vis., speed, and, xoilh sgiced,
accuracy."

From tho lleporl of the Postmaster fioneral for 1872
p. 28.

“Tho introduction of the duplex transmitter, doub¬
ling tlio capacity of lines for through b usincss, and of
the 'fast' or •automatic' system, by which one wire
can bo inado to do tlio work of six.”

•om The Report of the Postmaster General for 1873.
"Tub Automatic oit Fast S\sn i "

Extract from circular letter of D. II. Craig, maim-
sr of the news ilc|inrtmoiit of tlic Automatic Tele-
•aph Company, dated February, 1878: After more
inn three years of patient waiting and watching, I am
last able to announce to you that automatic or fast
hjraphy is absolutely finished and iu practical opera-

Citations fuom Tki.kiiiiathic Litekatuuk.

THE DUPLEX Oil MULTIPLE SYSTEM. .

I'rom The Telegrapher, vol. iv., p. 268, April 11, 1808.
Edison’s Double Tiiansmhtkii.

"By means of this ingenious arrangement two
loiiumuiieulions may be transmitted in opposite dirco-
ions at the same time on a single wire.”

From The Telegrapher, vol. iv., p. 280, May 2, 1808.
The Double Tbansmission System of Teleo bath¬
ing, by F. L. Pote.

“ A systom of telegraphing which should admit of
the transmission of communications in opposito direc¬
tions over a singlo wire at the same time." * * *
“Soon after the experiments of Gintl, improved sys¬
tems of double transmissions woro invontod by Frischon
and Sicmons-Halsko."

From The Telegrapher, vol. iv., p. 297, May 9, 1868.

“ An improved systom of double transmission was
invonted in tho year 1864 by an inspector of telegraphs
in Hanover, named Frisohen."

Advertisement in The Telegrapher, vol. v p 129
Dec. 12, 1868.

EDISON'S

DOUBLE TRANSMITTER,

The most Practical Apparatus of its kind yet invonted.
Complete Sets (put up in working order),
Price, $4.00, $4.60, $5.00.

For further information, address

THOMAS A. EDISON,

Caro Okas. Williams, Jr.,
Telegraph Instrument Maker,
109 Court street,

Boston, Mass.

From The Telegrapher, vol. v., p. 272, April 17, 1869.

“ On Tuesday evening last a new double transmitter,
on an improved plan, invented by Mr. T. A. Edison,
was tried between New York.aml Bochester."

From The Telegrapher, vol. vi., p. 88, Nov. 6, 1870.

“ The Bankers & Brokers’ Telegraph Company have
equipped one of their wires between this city and

Philadelphia with Stearns’ apparatus for double trans¬
mission, enabling the operators to work both ways at
the samo time on one wire.”

From The Journal of (he Telegraph, vol. v., p. 180,
May 1, 1872.

11 As an ovidcncc of tlic value of Mr. Stearns’ ma¬
chinery for the transmission of messages both tvnys
over the same wire at tho same lime, wo givo tlie fol¬
lowing * * * : ”

“Here is avast advantage gained. No automatic
plan approaches it in positive value. It is the most
marked ndvanco yet made in telegraphic service, for,
though it docs not cpticken the process of transmission,
it practically does so by doubling the capacity of every

From The Journal of (he Telegraph, vol. v., p. 148,
May 15, 1872.

’The Western Union Telegraph Company has ae-
quired the exclusive ownership of the patents of 1SG8,
of Joseph B. Stearns, of Boston, Mnss., for instru¬
ments by which telegraph messages are transmitted in
opposite directions by tho use of a single wire."

Editorial Caption Journal of the Telegraph, vol. vi.,
p. 88, January, 1878.

“Successful Experiments with the Stearns’
Duplex Working a 2,000 Mile Circuit.

letter from C. H. Haskins, in London Telegraphic Jour¬
nal, June 10, 1878.

“ I note In your journal of the 16th February, in
your article on ‘Duplex Telegraphy,’ that Mr. Baggs
was tlio first to add the condenser to tho existing appa¬
ratus. I had supposed myself familiar with all that
had been made public in Europe or in this uouutry in
double transmission. * * * ”

From London Telegraphic Journal, vol. vi., p. 217.

“ The Stearns’ duplex lias been used for several years
in tho United Stnlcs. * * *

Like all double transmission systems since Gintl,

Citations showing the scope and meaning attached
to the expression, “System of Automatic or Fast
Telegraphy,” and tho use of “automatic” or “fast,"
as convertible terms, by George Harrington and by
George Little, whoso name appears in tho Edison
assignment to Harrington, ns designating the system
upon which tho Edison improvements, which form the
subjeot of that assignment, were or wore to be based.

Extract from ngreemont botwcon Harrington, and Little,
made Sept. 22, 1871:

“Whereas, George Little, of’ltullierford Park, Now

From The Bcport of the Postmaster General for 1872,
pngo 28.

“Tho introduction of tho duplex transmitter, doub¬
ling tho capacity of lines for through busincsss, and of
tho 1 fast ’ or ' automatic ’ system, by which ono wire
eau be made to do the work of six.”

Jersey, lies invented nnd patonlcd n System of Auto¬
matic on Fast Teleguapiiy.

"And whereas, the said Qcorgo Harrington is inter¬
ested to the extent or nnc-tliird in certain inventions
and patent rights, useful in mUomalie telegraphy, in-
eluding a copying printer of Thomas A. Edison, of
Newark', New Jersey.

“ Now, therefore, * * * so far as such inventions
are applied by said company to automatic telegraphy
and used, lets., &c."

om Circular of George Harrington, President of the
Automatic Telegraph Company, New York, Jan.

"The President of the Western Union Company
having set forth in a published letter * * *

concerning the Automatic or fash system. * * *

"The people are interested only in knowing whether
the capacity and economy of the automatic system
are to enure to their benefit." * * *

From Letter of George Little to Win. Orton.— JV.;

Telegrapher, No. 438, p. 269, October 16, 187-J.

To Wit. OltTON :

“You say of fast telegraphy, ‘this is a favorite des¬
ignation given by its friends to what is better known
ns the automatic tyitcm. Why it should be called
‘fast’ I have never been able to comprehend. I will'

“Little’s Rapid Automatic Tblegiiapii System.”

The general literature of the art thus disoloses the
difference between tho automatic nnd the duplox sys¬
tems, and the fact that the facility for rapid signaling
afibrded by the automatic system became its distinctive
uharuutcnstiu and led to its being familiarly calle.1 the
“ fast system.”

Hence the uso of the words “ automatic ’’ and “ fust"
ns synonyms by Edison and Harrington in tlioir agree¬
ment of August -1, 1871, nnd the like use of similar
terms by Harriiir'ton and Little in their ngreemont ol
September 22, 1S71, and by George Little, in his letter
of Oelolier 15, 1874, to William Orton, and by George
Harrington, in his circular to the public of January
2S, 1874, is proved to bu the only uso of tlioso words,
in connection with telegraphy, which is justified
by and in keeping with common and long-continued

That the “automatic or fast"systom is one thing,
an-l tho system of multiple transmission is another
thing, is illustrated by tho fact that both systems, if
desired, may be used together. That is to say', sevoral
messages may be simultaneously transmitted by tho
simultaneous operation of several automatic signaling
macliinos, thus adding tho clomonl of "fast” to tho
clement of multiplicity.

Tho wire upon which the electrical ourrent travols
in ono direction, nnd tho enrtli, through which the our-,
rent returns to its starting point, may bo likonod to a
double track railroad. The performance of a given

amount of transport sorvico by moans of a train run
at a speed of fifty miles an bour would be properly re¬
ferred to as exhibiting a fast system of railroading.
But the same volumo of sorvico could be performed by
five trains of like capacity running at the rate of only
ten miles an hour. To call the latter a Inst system of
railroading would be obviously absurd. Nevertheless,
the fast system might be applied to the five trains by
giving them all the speed of fifty miles an hour, just as
the fast system of telegraphy might be adopted for tlio
simultaneous transmission of several messages by sub¬
stituting automatic or mechanical signaling for the
hand-signaling of several operators.

V.— The suggestion of issuing pntcnLs to Edison
alone eannot be defended. His double-dealing lias
given rise to tins complication. Neither his personal 1
action, nor the merits of Mr. Jay Gould, his attorney
irrevocable, appoar to point them out as persons
specially trustworthy to hold title for others. Mr.
Prescott, tlie only person who is, without dispute, en¬
titled to some slinro in the monopoly, should not bo
oxcludcd from the letters patent, and bo thus put to
demand another assignment to restore him to his
rights. In Gaylor vs. Wilder, the Supremo Court, aficr
holding that an assignment of the invention before
issue of letters patent, passed a legal title to them
upon issue, the issue having been improperly made to
the inventor, instead of to the assignee, said: "We
aro the less disposed to give it" (tlie assignment) "any
different construction, because no purpose of justice
would bo answered by it,” p. 408 j and further: 11 Kits-
gerald sets up no olnim against tbo assignment, and to
require another would he mere form," p. 494.

In this ease Edison sots up no olnim against the
assignment to Prescott It is Harrington who sets up . !

a claim adverse to us. Edison’s lottor referring to his
“misapprehension," and his futile effort to withdraw
a request (made on good and indefensible considera¬
tion), do not tend to impeach the assignment as be¬
tween himself and Prescott. Even if Harrington is
held the ownor of two thirds, the assignment is still
good to take from Edison all the interest he has re-
mummy. That Prescott is the ouly person who is,
without dispute, the owner of some interest in tlie
patents to be issued will appear by considering, as is
done below, the state of each claimant’s titlo :

1st. As to Harrington. Prescott disputes the as¬
serted effect of tlie Edison assignment to
Harrington of two-thirds, and tlio decision of
the Commissioner, or of a court, may declare
Harrington to bo totally without interest.

2d. As to Edison. Edison professed to havo as¬
signed to Harrington two-thirds. Tf this is
so, he certainly lias also assigned Prescott
half; lie is therefore one-sixth overdrawn and
must bo held to be totally without interest.

8. As to Prescott. If Prescott’s own theory is
right, he is the owner of half. If Harrington
is right, Prescott (having been assigned one-
half of the whole) will take tlie remaining
one-third (being all ho can get). If Edison
is right in his construction of his agreement,
still Prescott has one-third j or if ho should
attempt to claim that lie assigned only one-
half his interest, that being one-third, Pres¬
cott has still one-sixth. Tims Prescott is tlio
only person who, in all events, must bo bold
to have some interest.

The Commissioner ought to issue Letters to Pres¬
cott and Edison, leaving Harrington to bring his suit
against them ns his trustcos.

1st Because lilt, title is safe in thou, by force of
tlioir agreement on recoivl. Harrington will
(lie and Edison being ill confederation) And
the title intact when lie wants to bring sail.

2d. Because, if given to Edison alone, the state of the
record title favors the granting of assignments
or licenses behind our backs by himself or
his attorney,. .lay Gould, which we might not
ho able to prove were not in good faith, and
which would at least needlessly complicate
matters, and cause useless expense.

M. Because, if issued to Edison alone, a suit must
be instituted to substitute some one with

Certainly, Prescott will be put in with him

Perhaps Harrington ami Prescott may oust
him altogether.

rr l’reseolt is put in now, the simple ques¬
tion for litigation will be, who is his partner?
and that suit would bo prosecuted at the ex¬
pense of the parties who arc the real contest¬
ants upon the material question whether they
have any interest, and not that of the party
as to whom the only question is, what is the
extent of his admitted interest?

It seems absurd, therefore, lo leave out the
only man who must surely be put in hereafter.

4th. Because the only specific assignment on re¬
cord is that to Prescott. No question of fact
is raised, or need bo determined, to enable tlio
Commissioner to know that the inventions in
question are the vory ones named in his
assignment, and at- the tiino of its dolivory in¬
tended to bo covered by Prescott’s assign¬
ment; and while it is certain that Edison in¬
tended to convey an interest in theso inven¬

tions to Prescott, the utmost that can bo said
for Harrington’s claim is that an ingonious
construction may porhaps raise somo doubt
whether lie did not intend to convoy an inter¬
est to Harrington.

On the other hand, to decide in fnvor of
Harrington, makes it necessary to try two im¬
portant questions, which can nowhere be per¬
fectly tried except in a court.

1«/ Question of Imxo. — Is the writing of 1871 an as¬
signment at all, capable to pass the legal title
to specific inventions; or cnpablo to do more
limn give a cause of action for damages or
specific performance if the titlo remains (ns is
not the case) capable of being conveyed in-
tact by llio contracting party ?

(Note.) — It sccn.s H. and E. have so con¬
strued that paper since they havo passed and
recorded a specific assignment for each inven¬
tion as it was born.

%il Question of Fact. — Whether, considering the paper
in proper form to operate as an assignment,
the patents in question are, in fact, within
the description of inventions which it pur¬
ports to convoy- V

VI.— Letters patent should issue lo Edison k Pres¬
cott, in accordance with their joint request of August
19, 1874.

J. Huw.ky Asutox,

GiIOSVF.N'OI! PottTKIt IiOWttEY,
Boscoi: Con-ki.ixg,

Counsel for tlio Petitioner,
George 13. Prescott

APPENDIX.

PATENT LAWS.

Section 38, Aot 1870.

Patents tnay be granted and issued or reissued to
the assignee of the inventor or discoverer- — the assign¬
ment thereof being first entered of record in the Patent
Office; but in such ease the application for the patont
shall be made, and the specification sworn to by the
inventor or discovcror, and also, if lie be living, in ease
of an application for reissue.

Sec. 4,895 of Rev. Statutes.

Patents may bp granted and issued or reissued to
the assigneo of the inventor or discoverer ; but the as¬
signment must first bo entered of record in the Patent
Office.

And in all cases of an application by an assignee for
the issue of a patent, tho application shall be made
and tho specification sworn to by the inventor or dis¬
coverer.

Agreement— Edison and Ha«bin(Iton, dated
Apiiii. 4, 1871.

Whereas, I, Thomas A. Edison, of the oity of New¬
ark, Stale of New Jersoy, for certain valid and valu¬
able considerations to me in band paid, and in further
consideration of certain covenants and stipulations to
be fulfilled by George Harrington of Washington, Dis¬
trict of Columbia, did stipulate and agree to invent
and construct lor the said Harrington full mid com--
plete sets of instruments and machinery that should
successfully and economically develop into practical
use the Little or other system of automatic or fast
system of telegraphy, and subsequently to improve
and perfect such instruments and machinery by adding
thereto from timo to time such further inventions ns
experience should demand and my ability as nil inven-
tor and electrician might suggestand permit, ami further¬
more, to prepare or cause to bo prepared, the necessary
description pnpors, tho model and drawings requisite
to obtain patents for all suoli inventions and improve-
inentB, the said inventions and improvements to bo the
joint property of the said Harrington and myself, and
the patents to be issued to the said Harrington and
mysolf in tiie proportionate interest of two-thirds to
said Harrington and one-third to mysolf; the whole
to be under the solo control ol said Harrington, to bo
disposed of by him forourmutral benefit in tho propor¬
tions hereinbefore recited, in such manner and to such
extent ns ho, the said Harrington, should deem advis-

able, with power to sell, traiisfer and convey the whole
or any part of tho rights and titles in and to any or all
of said inventions and improycmenis as also of the
patent or oilier rights arising therefrom. And the said
Harrington having faithfully fulfilled all of the cove¬
nants and stipulations entered by him :

Now, therefore, bo it known thnl, in consideration
thereof and of the sum of ono dollar to me in hand paid,
I, Thomas A. Edison, of the city of Newnrk, State of
New Jetsey, do, by these presents, hereby assign, set
over and convoy to him, the said Harrington, two-
thirds in interest of all my said inventions, including
therein all my inventions of mechanical or copy¬
ing printers, and of all the patents for all such inven¬
tions and printers, whether already issued, applied
for, or to be hereafter applied for, mid or all and what-
soever ol my inventions ntul improvements made or to
be made, and ot all the patents that may be issued
• therefor, that are or may be applicable to automatic
telegraphy mechanical printers.

And whereas, I am desirous of obtaining the co¬
operation and assistance of the said in disposing of
of my said one-third interest ns before recited, and for
die purpose of united and harmonious action in nego¬
tiating for its use or ils sale mid transfer by'
- to others in conjunction with his own mid
in such free and unrestricted manner as will
tend to success, and for the sum of one dollar to me in
hand paid, the receipt whereof is hereby acknowledged.
Now, therefore, bo it known, that I, Thomas A. Edison,
ol tlie city of Newnrk, State of New Jersey, have con¬
stituted and appointed, and by these presents do consti-
tutc and appoint, George Harrington, of the city of
Washington, District of Columbia, my true and Inwful
and only attorney irrevocable, with power to substi¬
tute for n,o anfi j„ ,lly Wllllej mil) in sucU mnnnor I1S |l0
may think best, to sell, transfer, mid confer all of tny
rights, titles end interest in and to any nud all of my
said inventions and the improvements thereto, whether

made or to bo made, and to sell, transfer and convey
all my rights, by patents or otherwise, nrising there¬
from already mado and obtained, and all snob as may
hereafter mado or obtained, mid to oxebuto in full
any or all tho necessary papers and documents requi¬
site fertile transfer of title, mid to invest in otiier par¬
ties full and legal ownership therein, hereby divesting
myself of and interesting him, the said Harrington, with
all the powers necessary in the premises, fully and com¬
pletely to carry out tho purposes and intentions here¬
in set forth, hereby fully, confirming all that my said
attoraoy may or shall do in the premises ns fully ns if
done by me in person, nnd requesting the Commissioner
of Patents to recognise him as such attorney.

Ill witness whereof. I have hereunto set my hand
and affixed my seal, in the city of Newark, this fourth
day ol April, eighteen hundred and soveuty-oue.

. T. A. Edison, [seal.]

In presence of

A. D. ComittN,

A. B. Candkk.

Assignment — Edison to Pkescott, dated August

10th, 1874

A. tnJen of agreement made and entered into this
nineteenth day of August, A. D. 1874, by and between
Thomas A. Edison, of Newark, in the Slate of Now
Jersey, and George B. Prescott, of tiio city and Stato
of Now York.

Witucssoth : Whereas said Edison has invented cer¬
tain improvements in duplex telegraphs for which lie
has executed or is about to execute applications for
letters patent of the United States, nnd such nppliea
boas are numbered 04, 05, 90, 97, 08, 90 nnd 100, nnd
are dated August 10, 1874, mid said Prescott is entitled
to an equal interest in the same and others hereafter
Mentioned.

Therefore, in consideration of the promises, and the
sum of ono dollar in hand paid, the roceipt-whereof is
hereby acknowledged, the said Edison has sold and
assigned, and does hereby set ovor and convoy unto
the said George B. Prescott, one undivided half part
of the right, title and interest, of every character, in, to
under, and connected with, oaeh and all the aforemen¬
tioned inventions and loiters patent on the same, when
granted, and authorizes and requests tho Commissioner
of Patents to issue tho said letters patent to Thomas
A. Edison and George B. Prescott, as the assignees of
said Edison, for the use a.id behoof of themselves, nud
their legal representatives. And whereas the said
liaison l,as ttlso invented otlusr improvements in duplex
telegraphs, tic 1 , t o of which have been lo.l-.ed

with George if. Phelps for the purpose of models bo-
ing constructed, it is hereby agreed that such inven-
tioiiit are included in this present agreement, and that,
when the applications for patents are made, the patents
to be granted in accordance horuwith, and that the said
liaison slmll sign the required papers therefor.

Tins transfer is made on tho following terms and
conditions, winch arc hereby made part of the consid¬
eration in the premises.

First. That liotli of the parties shall have an equal
undivided interest in all letters patent of the United
fatales, or of any foreign countries, which tuny be granted
for nil or any of said inventions, or of any future im¬
provements thereon made, by cither party, anil of all
extensions and reissues of any such lettcre patent.

Second. That whereas, Edison lins heretofore ex-
pended $1126 for models anil patent fees, the benefit
of which lie contributes to tho common interest, and
waives reimbursement of that sum, or of any part of
it; Prescott hereby agrees to pay sololy, and without
contribution from Edison, all tho future expense mid
cost ot specifications, drawings, models, patent oflied

foes and patent solicitors’ and agents’ foes, and nil other
clmiges incident to tho procuring of lottors patont for
any of said inventions.

Third. — Tlmt neither of said parties will sell, assign,
or othorwiso dispose of the whole or any part of his
interest in said inventions or letters patent thorefor,
or any of them, without tho written consent thereto first
obtained of tho other party.

Fourth. — That neither of said parties will himself
manufacture, use or sell, nor grant licenses, nor the
right in any way to any other party, to manufacture,
use or sell, any of tho said inventions, or any improve¬
ments thereof, or any machine embodying, or article
containing, any of said inventions or improvements, or
protected by any of said letters patent, without tho
written consent first obtained of tho other party.

Fifth. — No sale of 0113- of tho said invent
license or right to mako or use tho same.

— lado or given, except at a prico to which both
parties agree 111 writing, and all net profits slmll bo
equally divided botween tho parties hereto.

Suth. — The covenants and provisions of this ngrcc-
aient, binding either of the parties hereto, shall also
hind his executors, administrator, and assigns.

In witness whereof, tho said parties have hereunto
sot limit’ hands and seals, tho da)- and year first nbovo
written.

Thomas A. Edison, [l. a]

_ Gkoiiok B. Pukscott. [l. s.1

Witnesses-^—

ILutor.D Seriieix,

Lejiuei, W. Sehhem,.

Know ull men by thoso presents, that wliorca
Thoinns A. Edison, of Newark, in the Slate of New ,
scy, have invented certain improvements in duplex l
graphs, for which I have executed, and am about
execute, applications for letters patent of the tin
States, and such applications are numbered 91, 95,
97, 98, 91), and 100, and nro dated August 19, 1871.

And whereas, 1 hnvo invented ot
in duplex telegraphs, the descriptions and models
which have been lodged with It W. Serrell, of
city, county and State of Now York, for the pnrposi
obtaining patents.

And whereas, I am the inventor of other impm
ments, relating to duplex ns well as qiindruplcx t<
graphs, for both of wliiuli l am about to innko ap
cation for lettcra patent.

Now, in consideration of one dollar to mo in In
paid, the receipt of which, as well as other good :
valuable considerations, I do hereby acknowledge, I
hereby give and grant to Jay Gould, of the city, com
and State of New York full (and irrevocable) pov
and authority to sell, assign, transfer and set ovcr.ui
.1113 person, persons or corporation, any right, title a
interest in, or to, any or ull of said inventions, or i
provemenls relating thereto, or in, to, or under, 11
letters patent which may be granted to, or at any ti
may belong to me, relating to any or all of s
inventions or improvements; and I do hereby a
givo and grant to said Jay Gould full (and irrevocnb
power and authority to give or grant any license
licenses in, to, or under any or nil ot said letters pate
or in or relating to any or all of said inventions
improvements.

And I do hereby also givo and grant unto said J
Gould full (and irrevocable) powor and authority to
and porform all necessary acts in and about the int
agemout of my interest in said invention or imnroi

meals and lottors patent, and ■ ench of thorn, and
relating to any business that may aviso there
hereby authorising and empowering him to mak
meet business engagements and liabilities, and
and perform each and every not which I or my 1
tors, administrators or assigns might or could do i
lion to the management of all business tninsu
relating to said inventions, improvements or
patent or any of them.

And I hereby authorize and empower the said 1
;o demand, sue for, collect, receive and givo a
mice and releases, in my name or otherwise, I
mills of money, debts and demands whatever,
ire or shall be due, owing or belonging to 111c,
ained from me, by any person or persons, whomse
ind also at any time to commence and prosecute
nd all suits or actions, at law or in equity, ii
lame, for the infringement of said letters patent
Iso to sign my name to any and all papers nece
ir commencing and carrying on said suits or ac
nd he shall have power (full and irrevocable), i
amc, to do and perform every act necessary and
cr, in and about said suits and actions.

I do also hereby authorize and empower the
ay Gould to appoint any substitute or substitut
is discretion, to do and perform all or any of the
eroby authorized, and I do in such case hereby
!r upon such substitute or substitutes each and 1
ic powers which I have hereby conferred upon
ly Gould, or which may by him bo delegated to
ibstitutc or substitutes.

In witness whereof I have hereunto set my hand
al this fourth day of January, one thousand (
indued and seventy-live.

Thomas A. Edison, [seai

In presence of

[The words “ full " and “ irrevocable ” interlincc
re execution.]

Olin J. Clanson,

Abthuk Kinnieb.

Statu or New York, ) ' „

City ami County ot Now York. j SS-
On tliis fourth tiny of Jummry, 1875, before me [>cr-
sonnlly eiime Thomas J. Edison, to mo known, and
known to be the individual described in and who exe¬
cuted the foregoing instrument, and acknowledged that
lie executed the same for the purpose therein men¬
tioned.

Own J. Ci, anson,

[SEAI‘] Notary Public,

N. Y. Ca

Application or Gkoiiok Harrington.

"Washington, .Tan. 28d, 1875. -
To the Commissioner of Patents:

Your petitioner, a citizen of AVnshinglou City, Dis¬
trict of Columbia, prays :

That letters patent may be granted to Tbos. A.
Edison, of the city of Newark, State of New Jersey,
ami to your petitioner, as bis assignee, for the inven¬
tions described as follows :

, . . provemeuts in Duplex Telcgmpbs, .lated

August 10, 187-1, and tiled September 1, 187-1.

. No. 95, ditto, ditto, ditto, ditto.

98, ditto, ditto, ditto, ditto.

97, ditto, ditto, ditto, ditto.

“ °8, ditto, ditto, ditto, ditto;

. 11 99, ditto, ditto, ditto, ditto.

“ 10 ditto, ditto, ditto, ditto.

28tb 1874 liUO’ <ktCtl ^ 14l,1> 1874> antl filed Beet
The assignment and power of attorney to your pc-
l1u,y ^cordc.1 in the Patont Office, May
btlh 1871, in Liber U 18, p. -112, of Tmnsfera of Patents,
Your petitioner therefore prays that the lcltcis patent
lor said inventions mayissuo to himself uud said Edison,

i the proportionate interests of two-thirds to hi
id one-third to said Edison, as provided in said ]
! attorney and assignment

Very respectfully,

George Harmnot

Letter op Thomas A. Edison.

Newark, N. J., Jan. 28d, 18
mimissioncr of Patents :

Sir — There are on tile in your olliee certain ap
ms for patents in my name, as sole inventor, ni
aiied with a request to issue the patents,
lowed, to myself and George B. Prescott
I made this arrangement with Mr. Prescott uml
mucous impression.

On tlic 1st October, 1870, 1 made a copartnc
ntmet with Mr. Georgo Harrington, and on tin
|>ril, 1871, in furtherance thereof, 1 made to hii
ligament, coupled with an irrevocable power of
y, reciting the main provisions of the contract,
which are still in full force and effect, whereb
ulrol of these inventions wits placed in the hail
it Harrington.

Under and 113- virtue of this power ot attorney
ligament therein, Mr. Harrington claims titl
;sc inventions, and objects, ami has objected, tc
nation from the said assignment and power o
ne3'. I therefore withdraw 1113' request for the
patents for Duplex and Qi 1 1 1 t ssi
ison and Prescott, and unite with George Uar
in his petition, this dty filed in your office, rcq
; the issue of the letters patent to Geo. Hnrrin
1 nyself, iu the proportions set forth in the powi
nney and assignment of April 4th, 1871, uud
itrnct therein recited.

Respectfully yours,

■Appeal of Edison and Harrington from the
(Decision of the Commissioner of (Patents
of March soth, i8j j, to the Hon: the Sec¬
retary of the Interior.

Argument for Mr. Edison.

In flic printed argument of Messrs. Colliding and low-
cry, on “ die just limits of die Secretary’s legal power over
decisions of the Commissioner of Patents,” it is conceded
(pp. 9, 10) that it is the. duty of the Secretary to refuse his
signature to a patent which the Commissioner hns ordered
to be issued, whenever the Commissioner hns exceeded his
jurisdiction — that the Secretary lias “ a practical veto power,
to he exercised in case of fraud or excess qf jurisdiction.”

We proposo to show that tho Commissioner hns in this
enso exceeded his jurisdiction.

1. Tho Patent Act does not authorize the issuo of a pat¬
ent jointly to the inventor and an assignee of a part inter¬
est in tho invention, and, therel'oro, a pntent enunot bo
legally issued in that form, unless by tho express unrevoked
authority of tho inventor at tho timo of such issue — which
authority was wanting in this case.

2. Tho act does not authorize tho issue of a patent to

joint assignees, wlioro thoir interests under tho assignment
lire not tho same ns tho joint patent itself would import
thorn to bo on its face. And no nssigneo claiming under
au assignment sul’niodo can demand the issuo of tho pntent
to himself by tho moro forco of such assignment. .

3. l’lio Commissioner cannot issue n patent to the in-
venlor and an assignee jointly, when tliero is no aj>j)lica-
lion pending in the Patent Ofiico for such issue.

The pending application boing for a patent to Edison
and Harrington jointly (the former application having been
withdrawn), the Commissioner has no jurisdiction to issue
the patent to Edison and Prescott.

As to the Issue of a Patent where a Share of
the Invention or some Partial Interest in
it has been Assigned.

In tho argument boforo tbe Commissioner of Patents,
Mr. Doubling took the objection that tho assignment of 4th
April, 1871, to Harrington, could not possibly entitle him
to demand the issue of the patents to liinisolf and Edison
jointly, because the statute authorizing the issuo of a patent
to an assignee is eon fined to a case where the whole, and
not a part merely,' of tho invention is assigned.

This objection was not noticed by the Commissioner,
although, ill the concluding paragraph of his opinion, 1m
adverts to tho question “ whotlicr tho assignment to Pres¬
cott is in such form ns to authorize tho Commissioner to
issue tho patent to Edison and Prescott as assignees of tho
former.” Ho does not state what objection (if any) was
mndo to tho form of that assignment, but says it is in tho.
words of tho form sent out by the Patent Office, and that
should bo doomed bnffleient, “ in the absence of any decision
by a higher tribunal invalidating pntonts thus granted.”

It is not probablo that tho Courts will decide that tho
issue of a patent to nii inventor and another as his nssigneo
of part of the invention is invalid wlion it is so issued at tho
inventor’s request, coupled with that of tho nssigneo. If
may bo presumed that it hits never been dono without such
request.

Mr, Conkling refers to a supposed chango made by tho
Revised Statutes in the wording of tho Patent Law, relat¬

ing to tho isano of pntonts to assignees. Ho snys that tho
revision has changed “assignees” to “assignee;” but adds
that the singular may bo construed to mean plural. lie is
mistaken as to tho revision, for tho act of 1870, see 33, has
the word “ nssigneo,” and tho revision is tho same. The
word “nssigneo” may, however, ho read to menu “nssigneo
orassignecB” — this not being like a penal statute, which is
to he construed strictly. When tho whole of. tho title to
the invention m assigned to two or more, that titlo is vested
in an “assignee,” within the meaning of tho net.

Mr. Conkling refers to the opinion of Attorney Gonernl
Mason, to whom the question was referred by the Secretary
of State, ns to the meaning of the clause in the act of 1S37
in relation to the issuo of patents to assignees. And Mr.
Conkling also refers to the opinion of Attorney General
Black on tho same question, to sustain the point that no
statute authorizes the issuo of the pntonts to Harrington
and Edison, under the assignment of 1871, because in that
instrument, in any view of tho case, there is not an assign¬
ment of tho whole, but only an assignment ot two-thirds oi
the inventions, the remaining one-third being in Edison,
tho assignor.

Tho distinction botween an assignment by Edison ot
one-third to himself and his retention of one-third, has not
a very substantial appearance. And if tho assignee claim¬
ing the issue of the patent to himself must bo assignee ot
the whole, then Prescott had no standing before tho Com¬
missioner. Now, Mr. Conkling’s argument is to tho effect
Hint a patent cannot bo issued to the nssigneo of part of the
interest in tho invention— that the assignment must bo of
the wiiolo of the interest. And ho insists on a formal dit-
fereneo between tho assignment of 1871 to Harrington and
that of 1874 to Prescott, the latter boing an assignment to
Prescott of one-half, and an assignment of the other halt to
tho assignor, Edison, .whereas the assignment to Hariing.
ton was simply of two-thirds, leaving one-third in' Edison.

Although tho assignee of a part of nil invention holding

under nil assignment iiindo after the invention was per¬
fected and before the issue of tho patent, holds the legal
title to such portion of the invention, and will hold a cor-
rcspoiiding title in tho patent, it docs not follow that lie is
entitled to the issue of the patent in his own name jointly
with that of tho inventor. The right of an assignee to de¬
mand a patent in his own name was first given hy the Act
of 1837, hut heforo the passage of that act tho assignee of
an invention heforo patent granted, but after tho invention
was perfected, took the legal title to tho extent of the as¬
signment, whether in tho whole or in port (Gaylor v. Wil¬
der, 10 How. 477).

The Rules of Practice in the Patent Office.

Rule 2. “ In caso of an assignment of the whole inter¬
est in tho invention, the patent will issue to the assignee
upon his request ; and so, if the nssiguce holds an undi¬
vided part interest, tile patent will, upon his request , issue
jointly to him and the inventor; hut the assignment must
first have been entered of record, and nt a day not later
than the date of the payment of the filial fee, and the appli¬
cation- must he duly made and tho specification sworn to
by tho inventor.”

Rule 09. “ When an assignment of the wliolo or an
undivided interest in an invention has been made and duly
entered of record in tho Patent Offico, tho patent will, upon,
tho request of the assignee, issue directly to him, or if ho
hold but a part interest, to him and the inventor jointly.”

Rule 100. “ In every enso whore it is desired that tho
patent shall thus issue to an assignee, tho assignment must
bo recorded in the Patent Office, nt n date not later Ilian .
tho day on which tho final fee is paid.”

Rule 101. “'Wiion tho patent is to issue in the iiauio .
of tho assignee, tho entire correspondence will bo with him
or his authorized agent.”

These rules do not recognize the distinction drawn by
Mr. Conkling between tho retention of a share by the as¬

signor and an assignment of such slinro hj himself to him-
tdf.

There may ho no objection to tho issue of a patent to
the. inventor and others joined with him, when tlint is done
by the full and unrevdked authority of tho inventor. That
appenrs to bo the practice of the Patent Olficc.

.The rules of tho Patent Offico do not ignore the point
tlint an assignee of a part of tho patent cannot demand the
issue of a patent to himself and tho inventor jointly under
the provisions of the act giving an nssigneo the right to the
patent. Those rules are intended merely to provide that
tho patent may bo issued to tho inventor and an assignee
of a part of tho invention jointly when not only the as¬
signee, but the inventor also requires such issue in that

The Rules of the Patent Office are binding in certain
Rises (see Lnw’s Digest, 027, title “ Rules of Patent Office ),
but they are of no weight in this question, tho Patent
Office having no authority to determine what are the loga
rights of an assignee of a part of an invention.

Revocation of tho Authority to Issue the Pat¬
ent to Edison and, Prescott.

Prescott’s counsol linvo assumed that as Edison filed an
application for a patont, and made tho oath required, and
oxecutcd an assignment to himself and Prescott, which was
duly put on record, all tho requisitions of tho law wore
complied with which wore made conditions precctlen
tho establishment of his right ns joint assignee, and conse¬
quently, that Prescott acquired a vested right to tlio is
of the patent undor tho assignment in tho form presen e ,
and could not bo divested of that by the act of Edison

Wo maintain, on tlio contrary, thnt Edison could with¬
draw the authority which ho had given to the Patent
Office — being linblc, of course, to an action by Prescott if
such withdrawal should prove to. bo without good cause.

Tlio question is whotber the nssigneo of pnrt of a patent
can demautl the issuo of the patent to himself jointly with,
tlio invontor when tlio invontor objects to it at the time of
tho proposed issuo, whatever may hnvo been his wishes
previously.

Wo concede that although tho assignment is not nintlo
to a singlo nssigneo but to several persons, tlioy am jointly
demand tho issuo of the patent to them after the inventor
lms made tho ontli and filed tho application for the patent
as required by the net. But all the assignees must join in
that application. If one of them withdraws his application
for the patent, it cannot be issued.

Tho word •' may,” in section 33 of the Act of 1S70,
menus that if tho assignee applies for tho pntent it may ho
issued to him, otherwise it will he issued to tho inventor.

That section, howover, does not spent of tho “ request ”
referred to in tho Rules — tlio request by tho assignee thnt
the pntent shall bo issued wholly or partly to him (as tlio'
.case may bo). Tho net speaks only of tho application by
the inventor for tlio patent, accompanied by his oath.
There must ho an application by tho inventor for tlio pat- .
ent actual!’/ pending, and the “ request” mentioned in tlio
Rules nf the Patent Office (Rules 2 and 00), is necessary to
set tho Pntent Offico in motion in favor of tho assigaeo,
and, of course, suqh request may bo withdrawn.

In the present case, tho application for tho joint patent
was withdrawn by Edison giving notice of such withdrawal
to tho Commissioner by letter dated January 23d, lb76.
Another application, dated tho saino day, was filed by Har¬
rington for patents to bo issued to himself and Edison.
Thoro is no application on file for tho issuo to Edison nloao,
and there is no subsisting application on which tho patents
can be issued to Edison and Prescott. Consequently, tho

patents cannot bo legally issued to Edison and Prescott

■ Where thoro nro two assignees, if they will not join in
an application for the issue of the pntent, or if after they
have inndo tho application one of them revokes his request,
the patent must bo issued (if nt all) to the inventor. And
wlton so issued, it will inure for the benefit of the assignees
according to their respective interests, and they will take
the legal title to the patent, so as to bo nblo to maintain
actious for infringement.

With respect to the revocation by Edison of his request
to hnvo tlio patents issued to himself and Prescott, it is very
different from an effort on tho pnrt of the inventor to defeat
tho legal effect of nn assignment of a patent, or of part of it.
Of course, timt cannot bo done.

Tiie opinions of tlio Attorneys General referred to by
Mr. Conkling nro clearly correct. A patent cannot bo is¬
sued to nn nssigneo and the inventor jointly, unless indeed
by the consont and authority of the latter. And it follows
that if siteli consent bo given, it may be withdrawn before
it is acted upon.

This right results from the very nature of tho request.
Whenever ono is requested to perform an net for the bene¬
fit of another, tho request may bo withdrawn before it is
heted upon. It is like tho dissolution of an agency by the
revocation of tho principal, which may he exorcised at the
mere will and pleasure of tho latter, for, as observed in
Story on Agency, see. 403, “ sinco the authority is conferred
by his uioro will, and is to be executed for his own benefit
and his own purposes, the agent enniioL insist upon acting
when tha principal has withdrawn his confidence, and no
longer desires his aid. This is so plain a doctrine ol com-
mon souse and common justice, thnt it requires no illustra¬
tion or reasoning to support it.” Sec, also, 2 Kent’s Com.

Tho right of Edison to revoke his authority to issuo tho
patent to himself and Prescott jointly is not nilbcted by tho

fact that Prescott may have paid the patent fees on the ap¬
plication for the patont, and the fees of patent agents, and
that in the contract of 19th August, 1S74, Edison, for a
sufficient consideration, agrees to authorize, and docs au¬
thorize, the Patent Offico to issno tho patent jointly to
himself and Prescott. Edison may bo linkle in damages
fora breach of contract in revoking tlio authority, but the
authority of the Commissioner does not tho less fail when
Edison withdraws it. The question tlion is for the eonrts
to decide between Edison and Prescott, whether the author¬
ity has been rightfully withdrawn. If wrongfully with¬
drawn, Edison may bo responsible for damages.

The Patent Office hnving no legal authority under the
act to issue a patent to tho inventor and his assignee of a
partinl interest, such issue is entirely dependent on an au¬
thorization of the inventor, irrespective of, and in addition
to, the assignment. It follows, therefore, tlint, if that au¬
thority bo withdrawn, tho patent cannot bo so issued. The
assignment is tho only instrument tlint is binding in the
Patent Office.

Tho authority of the Patent Office to issue the patent
to an assignee depends, not on the assignment alone, hut
on the application of the inventor for the pntent, and the
request of the assignee for the issue of tho pntent to himself,
which is not referred to in tlio act, but which is necessarily
implied.

Opinions of > Attorneys General Mason and Jitach ■

The opinions of Attorney General Mason and Attomoj
General Black wero given upon tho act or 1837, which au¬
thorized the issue of a patont to “ assiynces.”

The opinion of Attornoy General Mason, July 7th, 1845
(Opinions of Attorneys Gonoml, vol. 4, p. 899): “Patent*
for inventions cannot issno to inventors and assignees of'*
partial interest jointly, but may issuo to assignees of the-
wholo interest. No provision 1ms boon mndo for the issue
of a patent for a part of an invention to the inventor anil
for tho other part to liis assignee.”

“Tho act of 1836, sec. 11, made patents assignable in lnw
either ns to the whole interest or any undivided part thereof,
and required the assignment to bo recorded. This power
of assignment, however, applied only to the patent, and not
tlio right to sue ont the patent.”

: “ The practico under this not (the act of 1837) has been
to coniine it to eases within its torms — to cases of assign¬
ment of the whole interest. It appears to mo very clear
that tho section was framed in view of such ensos only.”

lie further Observed that the not of 1836, see. 11, em¬
braces cases of pnrtinl assignments, but that the 6th seetiou
of tho act of 1837 is confined to eases of assignment of the
whole right, and he thinks that a patent issued otherwise
might bo hold contrary to lnw. “ The net of 1837 does not
impair the equitable rights which an assignee, before issue
of patent, had, nnd his interests will be protected by tho
Courts.”

Opinion of Attorney General Black, November 2Sth,
1859; Opinions of Attorneys General, vol. 9, p. 403, fur¬
nished to tho Secretary of State.

Tlio inventor Agcr npplied for tho patent to bo issued
to himself. "Woolf and Jordan, assignees of Agor, claimed
the issue to them.

Tho opinion is : “ Whore tho inventor of n new machine,
before a pntent issues, makes a full nnd complete assign¬
ment of all his right to another porson, tho nssigneo may
have the patent issned in his own name.”

" But where tho transfer or assignment of tlio inventor’s
right is only partinl, although tho part oxeopted bo very
small, I do not think that the nssigneo lias any claim to tho
■ patent. He must allow it to go out in the name of tho in¬
ventor, and bo held by him in trust for tho uso of tho ns-
signoc,.to tho extent of the equities which ho lias by virtue
of his contract.”

In Snydam v. Day (2 Blatch. 20) it was hold that, un-
(•er the Pntent laws of tho United States, an nssigneo of a

patent must lie regarded ns acquiring Ins title to it with a
right of action in his own name only liy force of the statute.

In Law’s Trcntiso on Patents, p. IfiO, ami in his Digest
of Patent Cases, these opinions of Mason and Black are re¬
ferred to, and no mention is made of any adverse authority.

It will bo observed that tlio act makes it a condition
precedent to the issue of a patent to an assignee tlmt the
assignment shall bo recorded. And the only assignment
which it authorizes to lie recorded is mi assignment embrac¬
ing the whole interest.

The Patent Act contemplates a written instrument,
signed by tlio owner of the patent, nnd duly recorded in
the Patent Office, ns necessary to vest the legal titlo in tlio
purchaser (Ashcroft v. Walworth, 2 Oft'. Gnz. Pat. 540; 5
Fisher, 528; nnd see Baldwin v. Sibley, 1 Clilf. 150).

If there he mi assignment of one-third of an invention
on the condition that ucithor should nliennto without the
consent of the otlior, nnd the patent should bo issued to the
assignee nnd inventor jointly (tlio usual form), the legal
rights of the patentees under the patent would not corre¬
spond with their actual rights under the contract between
them. Under tlio patent, they would bold in equnl moieties,
nnd either of the patentees could, without tlio assent of
the other, give full titlo to anybody to uso the invention
(Olum v. Brower, 2 Curtis, 524:). "When, howover, the ill;
ventor nnd assignee of part join in asking for tlio issue of
the patent to themselves jointly, they are contont to bo left
to execute further assurances accurately defining their re¬
spective rights, and limiting their respective actions in re¬
gard to the patent. But certainly, without such authority,
the pntont could not be so issued.

As to tlio Legal Effect of an Assignment by
an 'Assignor to Sims elf.

Tlio distinction contended for botwcon tlio retention of
a part of the invention by tlio inventor and an assignment
of it to himself cannot bo sustained.

If ono desires to niuko another joint owner witn uim-
tclf of a piece of property, ho conveys the partial interest
io the other party ; ho dees not convey his own share to
himself — that ho retains. Or he conveys to a third party
in trust to recoil voy pnrt to himself, nnd to transfer tlio re¬
mainder to tlio third pnrty.

It is n solecism to speak of nil assignment by ono to
himself. Sco definitions of ‘‘-assignment ” nnd “ convey-
iincc,” AYlinrton’s Law Lexicon—1 “ ‘ Assignment,’ n trans¬
ferring or sotting over to another the interest which a
person possesses in anything (2 Bln. Com. 320).” “ ‘ Con¬
veyance,’ an instrument which transfers property from ono
person to nnothcr.”

Suppose a patent to bo owned by a married woman,
will the assignment of that pntont by the husband to him¬
self be a reduction of tlio patent to his possession and own-
crsliip 60 ns to deprive the wife of her right to it iu cose o
her surviving her husband ? Certainly not. It would bo
no assignment nl all ; it would lie a merely nugatory act.

4 Kent’s Com. 134, “The husband, upon marriage,
becomes possessed of the chattels real ot the wife, as eases
for years, and the law gives him power without her to sell,
assign, mortgage, or otherwise disposo of tlio snmo ns lie
pleases by uny act in his lifetime.”

If he disposes of a part interest in the term, that would
not deprive the wifo of her right to the remainder ns sur¬
vivor. And query whether the partial assignment would
bo cil'ectiinl kt all as against her. - .

The practice of conveyancers when the assignor desires
to retain an ihtorest in tlio thing assigned, under a new
title «» aesifjnee, is to make an assignment to a trustee.
Tims, when a person entitled, in right ot his wi e,
chattel real wants to rcduco'it into possession so as
off bis wife’s right as survivor, he makes an assignment to
a trustee in trust, to reassign (Coppmger’s Precedents in
Conveyancing, title “ Assignment ; ” 1 Orabb s Piet. 42 ).

A change has recently been made iu England by act o

Parliament in respect to tho form of assignments of per¬
sonal property and chattels real where it is dosired that tho
assignor shall Imre or retain some interest. This serves to
show that, but for such cnactmont, there could bo no rnlid
assignment by ono to himself.

Woodfall’s Landlord and Tenant, 10th Anioricnn edi¬
tion. 1871, pago 202.

“By 22 it 23 Viet. chap. 35, sec. 21, ‘Any person shall
lmvo power to assign personal property now by law assign¬
able, including chnttols real, directly to himself and another
person, or other persons or corporation, by the like means
ns bo might assign tho same to another.’ Therefore,
upon the appointment of a new trii6tco of leaseholds and
personal estate, the continuing trustees may assign tho
trust property direct to thomsolves and the new trustees
jointly upon the trusts of tho settlement, whereas formerly
an assignment und reassignment wero necossnry to effect
this object.”

Ho net authorizing the issue of .n patent to nn assignee
of nn invention, does not apply to a enso when tho assign¬
ment is not absolute, but is aiib modo only. There is nn
established distinction between nn absolute assignment oi

ter enso, the assigiieo having only a mb mot/o assignment,
is not, in legal contemplation, nn assignee of tho patent,
and, therefore, cannot bring nn action or suit ngniuet in¬
fringers (see Brooks v. Bynin, 2 Story, 643 ; 'Washburn v.

- Gould, 8 Story, 102 ; Troy Factory v. Corning, 14 llow.
210 ; Curtis on Patents, see. 105).

In the present case tho assignment of a moioty of tho
invention by Edison to Prescott is a qualified assign-
meat; i.e., it does not vest in Prescott tho right ’and title
ot an absolute assignee, 'but provides that ho shall have no
power to dispose of tho thing assigned without Edison’s
authority. Such a modified assignment or partial and

qualified disposal of a shnro of nn invention, lncks one of
Unessential qualities of ownership, viz., thoy'iM disjponendi ,
and cannot authorize the issuo of a patent on the faco of
which Prescott would have the lognl title jointly with Edi¬
son, absolutely without any qualification whatever, and
bv virtue of which ho (Prescott) could grant valid licenses.

; It may be said, howovor, that Edison would not bo
prejudiced by tho fact that tho patent, on its face, makes
Prescott absoluto owner of n moiety of the patent, bccauso
the assignment of 19th August, 1874, to Prescott, which is
recorded, shows the contrary. That restriction depends
upon h mere contract. And it raises tho question whether'
the record of that instrument is notice ns to which it is to
boobserved that tho recording of an assignment of an in¬
tention which has been already perfected, is recognized
and implied! g authorised by the provision of the patent
Iswwliich requires it to be recorded before the patent can
bo issued to tho nssignee. Tho act (sec. 33) does not in any
way recognize nn assignment of a share of an invention,
nor docs it recognize nn assignment of tho whole of the in¬
vention subject to restrictions and qualifications. Such an
assignment docs not entitle tho nssigneo to demand the pat-

Any purchaser from Prescott, if tho patent should be
. feoed to him and Edison jointly, might rely on the patent,
sod would be undor no obligation to search the records of
tbc patent office for contracts affecting Prescott’s title, as
%n by tho patent, and limiting tho manner in which the
ownership of the cxpccto 1 patent should bo exercised.

.' '•Tho recording of nn instrument not authorized by law
to bo so recorded, is wholly inoperative, mid is not avail-
»Mo to churge anybody with notico (seo tho Inst American
■ eitnlton of Sugdcn’s Vonders and Purchasers, ed. ot 1873,
ip'fltll, noto g, and tho • numerous American cases there
c't.«l i 1 Story Eq. Jur. secs. ' 403, '404 ; 4 Kent’s
(Utb cd.) 174.) A moro licouso undor a patent need
nobbo recorded (2 Story, 541 ; see, nlso, Curtis on Patents,

■ - r.

6cc. 183, note 2). “ Wo Imvo Boon tlmt ft contract of sale
of n future invention, although in tcnn» nn absolute sale,
enn opornte only ns a contract to convey, nml tlicro is no
Btntnto which contemplates or requires tho recording of nny
conveyance excepting assignments of existing patents idler
patents lmvo been obtained, or assignment of inventions
made and perfected, wlion it is intended to lmvo the patent

Tlie act giving the nssigneo of nn invention tho right to
Imvo tliu patent issued in his own name, cannot possibly
rol'er to nn assignment of only a part interest in tlie futuro
patent, especially when that is an assignment tub moth
only.

Tiio distinction bctwcon tho transfer of n partial interest
in n chattel nml an assignment and transfer of that chattel,
is nn established distinction important for ninny purposes.
Tims, wliero a lesseo transfers a part interest in his lease,
keeping a reversion, the holder of such part interest is not,
in legal contemplation, nn assignee of tho lease, and eonsc-
picntly lie cannot bo sued by the lessor on the covenants
of the lease, there being neither privity of cstnto nor priv¬
ity of contract.

If a los6co disposes of tlie term granted to him, reserv¬
ing any portion thereof, however small, the instrument
will operate ns an underlease, not as an assignment. Thus,
if the lessee reserves to himself only the Inst dny of the
term, the assignee of tho rest of tho term is not tho as¬
signee of the lease (Davis v. Morris, 30 N. T. 509 ; Tay¬
lor’s Landlord & Tenant, cd. 1873, sec. 10). And n cove¬
nant not to assign a lenso is not broken by tho granting of
nn underlease.

The issue of tlie patont to Edison nnd Prescott jointly
would givo Prescott the logal titlo to a moiety of tho
patent without nny qualification, but if tho patont bo issued
to Edison alouo, tho titlo of Prescott will then rest ujion
tho assignment to him of a moiety inado beforo the issuo

legally issued to Edison and Prescott jointly. And tl
Ike Secretary should suggest a rehearing of tlio enso bef(
tlie Commissioner on tho points presented above, a
irhich were not brought to tho Commissioner's notice.

Wh contend that tho matter should bo left undispot
if by tho Commissioner until ho shall lmvo a proper 1
plication beforo him for tho issuo of tho patents to Edit

R. W. RUSSELL,

Of Counsel for Tuos. A. Euisi
Now York, May 4th, 1875.

35rt the 'sJPoicnf dDjficc.

ARGUMENT ON BEHALF OF EDISON.

As to the Issue of Patents to Assignees.

Tho Act of 1837, see. 6, enacted “Timt any patent
hereafter to bo issued may lie made and issued to the as¬
signee or assignees of the inventor or discoverer, tlio assign¬
ment thereof being first entered of record, and the appli¬
cation therefor being duly inndo and tlio specification duly
by tho inventor."

Patent Act of 1870, see. 33, “ Tlmt patents may be
granted and issued, or reissued to l\\a assignee o( tlio in¬
ventor or. discoverer, the assignment thereof, &c. (samo as
in above net).

Revised Statutes of tlio U. S., 1875, page 055, see. 4895,
Patents may be granted and issued, or reissued to the
assignee of tho inventor or discoverer, but tho assignment
must first be entered of record in tho patent office. And
in all cases of an application by an assignee for tlio issno of
a patent, tlio application shall bo inndo and tho specifica¬
tion sworn to by the inventor or discoverer.”

, Tho act gives the assignee tlio right to demand tlio
issue of the patent to himself, when ho 1ms recorded; his
assignment, and tho patentee has filed an application for
tho patent, and has duly sworn to tho specification. . And
tho assignee can domnnd the issue of tho pntont to hunsolf

in such case, oven although the inventor may demand the
issuo of the patent to himself (Opinion of Atty-Gcn. Black,
vol. 9 ; Opinions of Attys-Gen. pago JO.'!, Nov. 28, 1859),

Meaning of the ‘ward “ may."

The word “may,” in see. 33 of tho Act of 1870, find
the 6nmo word in the Revision of 1875, means “shall,”
when the inventor has complied with tho requisitions speci¬
fied and tho assigneo has recorded his assignment and de¬
manded the issue of the patent to himself. Sco cases
whore tho word “may” in a statute prescribing the
duties of public officers has been held to mean “ shall” (1
Kent’s Com. 407, noto (4), 11th cd). Tho assignee has a
claim lie jure that tho power shnll bo exercised. When the
inventor 1ms made tho oath, filed tho spccilication and paid
tho Ice, and tho assignee 1ms recorded the assignment, tho
Commissioner may issuo the patent to such assignee, and
must do so if tho assigneo demands it. In that sense the
act is mandatory. Without that demand, the Commis¬
sioner is not bound to take notice of tho recorded assign¬
ment, but may issue the patent to tho inventor.

Tho proposition is not sustninablo that the Commissioner
is invested with a capricious power in tho matter, so that:
although all the requisites of the law have been complied •
with, and all the rules and regulations of tho oflico duly
observed, ho may, whenever he chooses to do so, refuse to
issue tho pntont to tho legal owner of the invention. • . ft

It may ho suggested, however, that tlicro may bo casia
where the assignee’s title is defective, and Hint tho Coin*
inissioncr hns power in such eases to reject his application.
The answer to this is, that wliero tho assignment is pcrfec|
on its face, and absolute, tho Commissioner should leave tho, ,
inventor to his legal remedies to cnforco his claims as;

agninst such assignment. , :

Ii the assignment hns been obtained by fraud, or hj '
opon to any other objection in a court of law or equity, tjiOj ,;
inventor can obtain redress in tho courts, and in tlifc :
moan time can abstain from applying for tho patent, prifj ,■

he hns applied for it, may withdraw his application. And
if the assignee shall be allowed by tho inventor to obtain
the patent and is not rightfully entitled to hold it, a decree
may be obtained compelling him to convey it to the in-

The principal questions.

The following nre the leading questions arising in this

1. Whether Harrington is, under thu assignment of 4th
April, 1871, an assignee of the invention in question, within
the meaning of the Act of 1S70, sec. 33, assuming that the
instrument, in terms, embraces the invention.

2. Whether Prescott is, under the assignment of 19th
August, 1S74, the legal assignee of a moiety.

3. Whether the Commissioner is bound to issuo a pat¬
ent to nn assignee of nil invention where such assignee hns
had notice of a prior contract hi htvor of another person,
the same not amounting to an actual assignment of the in¬
vention.

4. Whether the recording of such last-mentioned docu¬
ment in the patent office is sufficient notico of its contents
to the subsequent assignee of the invention.

5. Whether tho assignment of 4th April, 1871, docs em¬
brace the invention in question.

0. What aro the rights of tho parlies at law and in
equity, assuming tho assignment to Prescott to prevail as
the only legal assignment at this time?

Remarks on the Commissioner s decision.

The Commissioner of Patents holds that tho assignment
from Edison to Prescott, dated 10tl| August, 1S74, vested a
legal title in Prescott as assigneo of one-half ol tho inven¬
tion in question, which was then ready to bo patented ; and
that tho assignment dated 4th April, 1871, from Edison to
Harrington did not opernto ns a legal transfer of that inven¬
tion, but could only opernto ns a contract to assign tho in¬
vention when it should bo perfected, or tho pntont for it

when it should bo obtained by the inventor. The reason
given for tins decision is that tho invention was not made;
at tho dnto of tho assignment to Harrington, 4th April,
1871.

Tho Commissioner holds that tho inventions were made
at .tho date of the assignment to Prescott, 19th August,
1874. That instrument refers to soven applications for
patents for the invention or inventions ns having been pre¬
pared.

Tho Commissioner further holds that ho has no right to
inquire into and decide tho question whether Prescott is
hound in equity by any provious contracts betwcon Edison
and Harrington affecting those inventions.

The Commissioner gives no opinion on tho question
(whicli ho refers to, p. 17) whether the assignment of 4th
April, 1S71, did, by its terms, embrace the inventions of
tho devices in question for quudruplex telegraphy. It is
contended, on behalf of Prescott, that tho instrument re¬
lates .only to automatic or fast telegraphy nnd certain
printing machinery, nnd that the quadruples system is not
a fast system of telegraphy, within tho menning of tho
phraseology of that instrument (seo this question discussed
port , p ,2a, cl sep)

As to the truo dnto of tho invention, tho Commissioner
concludes that, undor the circumstances, it is to be pro- [
Burned that it was not made as early ns 4th April, 1871, the
applications for the patents not having been filed until'lst
September, 1874, as to six of them, nnd not until 28th De- '
camber, 1874, ns to Ibe seventh pntent. Tho Commissioner
might have given an additional reason for holding that the
inventions wore not mndo as early ns 4th April, 1871, for
the caveat, which lie refers to in his opinion (p. 18), ns tho
first record in tho Patont Office specifically referring to
theso inventions, was filed. in 1873; and ns that caveat
must, in compliance with tho requisition of tho statute, '
linvo declared that tho invention was not thou completed, ' ;

it disposes of ;tho question whethor it was completed ns
early ns 4th April, 1871 — that is, assuming that tho Com¬
missioner is right in his reference to thio caveat ns being a
caveat for tho inventions which afterwards formed tho sub-
• jeet of the applications for tho patents now in question.

Tho Commissioner is in error in saying (p. 18) tlint, in a
court of equity, Harrington will linvo to prove that the in¬
vention was perfected at the dnte of tho instrument under
. which ho claims. On tho contrary, it is well settled tlint a
contract to dispose of a future invention is binding, and will
be enforced in a court of equity against tho inventor, when
. tho contract is not unconscionable (see authorities cited
port, p ./2). And such a contract will also be enforced
against a party having notice of such contract, before ac¬
quiring an ndvorso titlo by assignment from the inventor.
These points will be fully treated hereafter.

The Commissioner errs also in saying (p. 23) that Pres¬
cott, whatever effect may be given to tho contract with Ilur-
■ rington, must, in nny event, take what ho [tho Commis¬
sioner] assumes to be Edison’s one-third of the title to tho
patents.

Tho answer to this is, that Edison, under tho contract
with Harrington, 4th April, 1871, is to have one-third ot
the net proceeds of tho patents — the right to dispose of
Edison’s one-third being given to Harrington, “ the whole
to bo under tho solo control of said Harrington, to bo dis¬
posed of by him.”

Tho Commissioner cites several authorities (p. 24) in
support of his proposition that Edison’s assignment to
Prescott must at all events tnko effect upon Edison’s one-
third of. tho patonts. It is unnecessary to comment upon
those authorities, ns tho fact just mentioned which tho
Commissioner has overlooked, renders thoso authorities in-
applicable; Tho right of Prescott would bo confined to
Edison’s share of tho proceeds of sales made by Harrington,
and this could not give Prescott nny title to tho patent
itself as against Harrington.

Tlio Commissioner laid grent stress upon tin's point as
justifying him in granting the application of Prescott to
hnvo tho patents issued to him and Edison jointly.

Tiie remarks of the Commissioner (p. 22) on the sub¬
ject of estoppel are not pertinent to the case. Tho doctrine '
of estoppel, whether, by deed or in pais, has no applica¬
tion here. If the deed or 4th April, 1871, hud clearly em¬
braced the quadruples invention, and if it had operated
upon a perfected invention, it would have prevailed as a .
legal assignment over tho subsequent assignment by Edi¬
son to Prescott, notwithstanding the fact that Edison might
be estopped ns against Prescott, from denying the subse¬
quent deed to him." It is, therefore, unnecessary to coin- :
ment upon the authorities cited by tho Commissioner on
this point.

The only case cited by the Commissioner (p. 20), for the
proposition that the deed of 4th' April, 1871, was not
oneetual to pass tho title because the invention had not then
been made, and therefore it could operate only as an exec¬
utory contract, is Gibson v. Cook, 2 Blntcli. 144, and that
case, although not expressly overruled, is opposed to more
recent decisions (see post, p./A, et seq., whero this ques¬
tion is fully discussed, with full reference to the authorities). :

Recording.

Prescott’s counsel apparently concede that tho record of
the deed of 4th April, 1871, was notice of its contents to'

1 rescott and all parties concerned (sco Conkling’s argument,1
P- ), and yet it might have been contended that tho
recording of that deed being unauthorized, tho record did
no operate ns notice ,(seo this point discussed, and authori¬
ties cited, post, p. ). \i

Ejuitalle rights.— Power 0f tho Commissioner.

,A® ^ tl'° question whether the Commissioner can look1'
ja. the legai title of tho assignee, ns shown by a ro->'
oided instrument operative as an assignment/

It has boon contended in this case, that tho Cominis
ionor can sco to tho equitable rights of the parties— tlml
io is not bound by tho strict rules of law ns distinguished
rom tho principles which prevail in courts of equity, but
lint, on the contrary, he should treat tho latter ns para

To this it is replied that the nssiguco claiming the issue
f the pntent to himself, must claim under a recorded
’Sigiiinoiit, and that if Harrington lias the l ight in equity
) cnforco his prior contract with Edison, so ns to cut out
lie legal assignee, Prescott, the Commissioner has lie
owor to administer that measure of remedial justice j that,
i tho language of the Commissioner’s opinion, “ho lias
ot the authority of a court to go outside the record (mean-
ig the records of the •patent oflicc) to consider evidence
i to outstanding equities.” Upon this, however, it is to bo
jserved that there may bo cases whore the Commissioner,
deciding upon tho application of an assignee for the
sue of the patent to himself, may have to go outsido tho
cords of the patent oflice. Thus, if there are two eon-
cting assignments recorded, and it is claimed that tho
m last recorded was first executed, I be Commissioner
wild have to receive evidence on that point (see Conunis-
mer of Patents v. Whiteloy, 4 Wall. 37-4).

It is further contended by Prescott’s counsel, that tho
signment of 4th April, 1871, to Harrington, is not nil
sigiinicnt but only a contract, and further, that .t Jo™
it cuibraco the inventions now in question.

Right of assignee.

Suppose an assignment of the whole t tin invdntiou
d been made by Edison to Prescott, and it had been ro-
rded, and Edison had applied for a patent in his own
me, in that caso Prescott could have insisted upon
issuo to himself. Ho would have had tho statutory
[lit to such issue, and tho Commissioner would not bo
itifled in refusing bis demand on tho ground that ho

[Prescott) lmd received notico of n i>nor contract not amount¬
ing to ft legal assignment of the invention to Harrington.

The right of tlio assignee of an invention to obtain tho
issue of tho patent to liiinsolf, dopends upon tho assign¬
ment, not upon the request or direction of tho inventor to
tho patent offico to issuo tho patent to tho assignee. Snell
request or direction is unnecessary — it is not cnllod for by
tho statuto.

1. As to the Legal effect of the tivo Assign¬
ments to Harrington and Prescott,

Tho difference between an assignment and a contract
to assign personal property, clintlcls real, &e., ib well set¬
tled. There can bo no actual assignment of n thing not in
existence; and although it maybe tho subject of n valid
contract of sale, that contract will not pass tho actual titlo
to tho thing sold. Thus, a valid sale may be mndo of tho
wine that a vineyard is expected to produce, or the grain
that a field is expected to grow (t Parsons on Contracts,
edition of 1873, p. 622, and cases thero cited).

Tho rulo that one cannot grant personal property in
which ho lias no vested interest or title, was applied to an
attempted sale of “ all tho halibut that may bo caught by
tho men and crew of tho schooner R., on tho voyngo upon
which sho is about to proceed ” (Low v. Pew, 103 Mass.
347, decided in 1871). That was an action of replevin,
which brought up tho question of title, and it was held that
tho contract did not pass tho title to tho BbIi when caught.
This is a well reasoned opinion with an amplo referonco to
authorities. Tho court observed thnt it is sufficient if the
seller has a potential interest in tho thing sold, bnt thnt n
mere possibility or oxpoetnncy is not tho proper subject ol
a transfer.

A contingent romniudor created by deed or will cannot,
at common law,' bo convoyod beforo tho contingency hap
pons (4 Kent’s Com. 201). But this !b altered by statute
in Now York. Chom in action are not assienablo at com

,n law, but courts of equity protect tho assigneo (2 Bln.
in. 442). An assignment will not, at common law, pass
or acquired property (5 Taunt. 212). Rights not ra¬
ced to possession uro not assignable at common law.
iis has been applied to personal property. Tho reason
signed is thnt it is necessary to prevent maintenance and
igntion.

But theso almost ohsoleto principles of tho common
w luivo no proper relation to tho question now in hand,
int question being wlnit instrument of transfer is an as-
tjnmenl within the meaning of the patent Urn, sect. 33.

Tho question frequently arises as to what constitutes an
isigmnent under tho pntont law, so thnt the assigneo in)
inintnin an action in his own name. Thero inns op
•ords of grant or transfer in the instrument. Tho interest
mst bo transfcrmblc, and must be actually trails cired.

In Nicoll v. Erie R.R. 12 N. V. 121, it was held ti nt
right of tho grantor in a conveyance in fee to re-enter lor
reach of a condition subsequent, is not assigns o P
Licli breach. The possibility of reverter is no «
oupled with an Merest, but a tare htg alone, and

i not embraced in the provisions 1 K. . > * fc\

naking expectant estates in real an perso 11 1

ilienuble.

r„uMr «..i.i XSffA

right of a lessee or his assigns to demand a renewal of h.
lease (Beo Igguldon v. May, 7 East, -3 ). y

certain whether tho right will bo exercised, but it is assig.
ablo with the lease. ..... nf tl

It may also die compared to to '«»•*£
husband in his wifo’s lands, ot which ho y^

ztssstt&zv* ■'» ** * * *

i „.Jir —

band ; none in law until lior dowor has boon assigned. It
lias, however, boon held that a rigiit of dowor was not as-
arguable beforo aetual assignment of tho dower (Green v.
Putnam, 1 Barb. 500 ; Seott v. noward, 3 Barb. 31 ; Moore
v. Mayor of H. Y. 4 Sold. 113). .

But such assignment might constitute a contract to as¬
sign, which would ho enforced.

Tho tenant by tho curtesy initiato has an inchoate right
which may bo convoyed. This initiato estato may- bo sold
on execution, and will pass by an assignment of tho bus-
band s property (4 Kent’s Com. 29 ; 2 Cow. 439; 3 Gray,

Tho following review of the authorities will throw liH.t-
on the questions to ho considered:

In Herbert v. Adams, 4 Mason, 15, it was held by Judge
Story, that an assignment of an invention could be mado
the ...ven ,o„ ,s patented ; that it is a good transfer
of the right of tho patentee immediately upon his obtain-

adverse ’title ’ ‘ “t “ "■°“l<1 be ‘° set up any

of I V' Ct-'U0!1, 1 509> ho],3s the assignee

ofn.i invention (not yot patented) may file a bill in his
ovn name, under sect. 10 of tho act of 1S3C, against a

nSinTtl ’ r t I,nto,,teo’ tor tllu purpose of nn-
P< m“ei t0 him> m,d *» l»>vo a patent
gi anted to such nssigneo. 1

• °toko’ 2 Bintci1- h°> «• wa ,

patent no t'vet” 7 "'ngra,,t of«'ut„ro tenn of a '

patent not yot in esse (an extension of a pa tout! is not tho

of sc™ finrr,01 aY°rrn or w**ln tho sense
ot sect. 11 of the act of July 4, 1830; and tho nVlit in
such an interest whon stipulated for rests only in contract

In Rnthhiin v. Orr, 5 McLean, 132, Judge McLean hold
that “an invention of a iniiehiue may as well ho sold beforo
as after tho application for a patent. Tho thing invented
is the property of tho inventor us much so ns tho manu¬
script of an author.”

In Rich v. Lippincott, 20 Journal Franklin Institute,
3d scries, 13, Judgo Grier held that an assignment, though
antecedent to tho patent, is a valid legal assign incut of the
invention afterwards patented in tho name of tho in¬
ventor.

In Gnylor v. Wilder, 10 IIow. 477, in the Snproino
[ Court of the TJ. S., it was argued by Mr. Wobstcr that an
invention is assignable at law. Mr. Oiiyler,e»nfra, argued
that an invention is not assignable independent of tho
; patent law; that, except by statute, the iuvontor has no
right of property in his invention. Tho court, per Taney,
•' O. J., held tlint when the invention in perfected, the in center
. has a right to a patent which is assignable, and that such
an assignment vests in tho assignee the legal title to the
patent when it has boon issued, and that no further or ad¬
ditional assignment is necessary to perfect tho title of tho
■ assignee.

Tho Court say tlint this was the received construction
of the Act of 17tl3 on several circuits, and that it had beon
held that tho action for iulritigeiiicnt must bo brought by
such assignee.

Curtis, in tho latest edition of his work on Patonts
(4th edition, 1S73), section 173, says that the decision of
tho Court in the last mentioned case “ gives a soinowhat
broader operation to tho Act of ISiifi^s^Ct^ll^liijn its
terms appear to einbrnco.” Mr. Gurus hBr^orronoously
assumes that tho decision in question applies to the iesuo
of tho patent to tho assignee. It has no roforcnco to that
subject. That was provided for in tho Act of 1837, which
did not apply to tho enso beforo tho Court.

Tho Court has recently carried tho principle of tho de¬
cision in Gnylor v. Wilder a stage further (soo 10 Wal-

It is inferable from the reasoning of the Court in Gay-
lor v. Wilder, that an assignment of a partial interest in
the completed invention and expected patent therefor,
would vest, on the dolivory of the assignment, the legal
title in the designated portion of the invention in tho
assignee. The Court treats a completed invention ns prop¬
erty assignable at common law. But it is to ho observed
that nnder the Act of 1830 such assignee, whether of the
whole or part of the invention, would have no right to de¬
mand tho issue of tho patent to himself. Dor did the Act
authorize the recording of an assignment of an invention
not yet patented. That right was first created by the Act
of 1837.

The assignment to Harrington in 18 il being made
prior to the invention, could only operate as a contract to
assign the invention when it should be made, even' if it is
construed to embrace by its teruiB the invention in ques¬
tion. It cannot be regarded as such an assignment as is
contemplated by the clause of tho Act of Congress which
gives tho assignee the right to demand tho issuo of the
patent in his own name. Soo on this point Curtis on
Patents, 4th ed. [1873], see. 183, note 2, to the offcct that
no present nBsigmnent can be made of nn invention not
yet in existence. Although this is founded on a familiar
principle, it is to be observed tlmt no authority is hero
cited by Curtis- which can now be considered to sustain
the above proposition— the case cited from 2 Blntchf. 143,
being irreconcilable with tho recent decision in 10 Wall.
307.

A contract in relation to a future invention will bo en¬
forced in a court of equity when tho bargain is a fair one
(Nesmith v. Calvert, 1 Woodb. & M. 41 ; Curtis on Pat¬
ents, sec. 180, noto). At tho dnto of the contract 4th April,
1871, not only was tho invention not then made — it docs
not appear to linvo been in embryo or even contemplated.

Equity will support assignments of contingent interests
aud expectations, aud of things which hare no present

ini existence, provided tho agreements are fairly entere-
. (Story Eq. Jur. see. 1039, 1057, «; 2 Story It. 030
Inre, 440; Fiold v. Mayor of N. Y. 0 N. Y. 170
oro V. Littol, 41 N. Y. 06; see also Stoner v. Eycks
icr, 3 Koyes, 020, nfli’g 40 Barb. 84 ; Hinkle v. Wanzo:
How. 308).

Tho purclinsor of nn expectancy has not nn interest i
property, hut a mero right under tlio contract. And
;he same if there be an instrument in writing in tl
in of nn actual assignment, for in contemplation ot equit
.mounts not to nn assignment of a present interest, bi
y to a contract to assign when tlio interest becom
ted. (See Purdon v. Jackson, 1 Buss. R. 1 ; Ilinklo
Inzer, 17 How. 308).

In Eiold-v. Mayor of N. Y. (0 N. Y. 179), it was lie
-t “an assignment for a vnlunblo consideration ot d
uds having at tho time no actual existence, but wliii
t in expeetnney merely, is valid in equity ns nil agu
nt, and takes effect as an assignment when tlio deman
ended to bo assigned are subsequently brought into t
nice.” (That is to say it takes eil'eet ns nn assigning
der the Now York Code, so that an action may be li

In Power v. Alger (13 Abb. 475) it was held that futn
Ills woro assignable under the New York statute.

A poiut has boon made, but not tally argued, to t
ect that who., an assignment is made o.f a future mvi
n, such assignment will take legal effect ; as soon as
, -cation is perfected. In tlio case in a • fi
.. was not on tho issue of a patent, but was upon I
lo to a patent already issued.

Tho question here is whether nn assignment of a
ution not yet made, would bo bold to operate as a lc
insfer of the invention at the dnto of tl. o st nets,
out off tho right of nn assignee, holding an assignment
d invention, after it has boon ...ado and betoro the is

In tho examination of this question it is necessary to
consider the bearing of tiie recent decision of the Supreme
Court of the United States in Railroad Co. v. Trimble (10
Wall. 307), which has been followed and applied by very
recent decisions on Circuit in New York and Massachusetts.

In that case, in the Supreme Court, it was held that “a
grant by a patentee of an extension of a patent, before any
extension has issued, will carry, if the torms of tho grant bo
proper ones, tho legal as well as tho equitable intorest in
tho patent.”

That decision must bo regarded ns overruling the decis¬
ion in Gibson v. Cook (2 Blotch. 1-19, cited supra), which
is tho case relied upon by Prescott’s counsel in tho argu¬
ment boforc tho Commissioner of Patents. It was a case
3n an extended patent.

Judgo IngcrsoII’s decision in Day v. Candco (3 Fisher,
9), is ulso overruled. It was there held that “a pntentco
innnot convey nil extended patent before tho extension. He
may, however, agree, upon a valuable consideration, to con¬
vey such right when it shall bo vested in him.”

In Aiken v. Dolan (3 Fisher, 197), decided by Judgo
Cadwnlludcr (in 1807), a patentee had agreed that ho would,
ipon certain conditions, assign to B. an extended term. It
vas held that, if tho conditions had been fulfilled, B. would
mve boon tho equitable owner.

In Rnggles v. Eddy (5 Fisher, 581 ; 10 Blntch. 52), dc-
lided by Judge Woodruff in June, 1872, S. assigned toR. n
intent and any extension of the samo which might be thcre-
iller granted. Tho assignment was recorded. “Subsc-
picntly, tho patent was extended to S., and lie afterwards
issigned to E. all his interest in tho extension. E. wont on
o uso tho invention, and was sued by R. in equity ior in-
ringeineiit. Hold, that tho right to tho oxtended torin
inssed to R., tho first assignee.

“ The title of R., if regarded ns an equitable title, issnf-
iciont to enable him to sue E. in equity, E: having tnkon
itle after the assignment to R. was recorded.”

“ But eemlle, that R. took tho'Iegal titlo.” ■

“ Tho enso nbovo first cited (Railroad Co. v. Trimble, 10
Wall. 387) tends to show that, in fact, tho complainant has
tho logal title.”

It will be observed that the assignment to R., being effi¬
cient ns n legal transfer, it of right prcvuilod against tho
subsequent assignment to E., irrespective of tho fact that tho
assignment to R. was recorded before tho assignment to E.
was made. It might bo contended tlint there was no. legal
nuthority to record the assignment to R. ; that tho act of
1830, see. 11, relates only to assignments of patents which
hnvo been actually issued at tho dato of the assignment (sec-
36 of the act of 1870 is to tho snmo effect).

Tho provision in the act of 1837, sec. 0, authorizes tho
recording of an assignment of an invention before tho pat¬
ent is issued, for tho purpose of giving the assignee the '
right to hnvo tho patent issued in his own nnine. Tho act
I of 1870, see. 33, is to the same cfleet. But these provisions
do not authorize tho recording of an assignment of tho
right to nn extended term before such oxtonsion has been
granted. Such nn assignment is not embraced by tho
words, “Evory pntent or any interest therein shall bo ns-
signnblo in Inw ; ” and said assignment shall bo void as
against any subsequent purchaser, &c., “ unless it ho re¬
corded in tho Pntent Office.” (Seo on this point Curtis on
Patents, sec. 183, note 2, 4th ed.)

Gear v. Grosvenor, 0 Fisher, 314, March, 1873, 3 Off.
Gnz. Pat. 380, in equity, Shepiey, Judge, held that, “n
conveyance made before a grant ot extension becomes op¬
erative upon tho right ns soon ns tho extension has been
granted, and by forco of such conveyance tho legal title
under the extended, ns well ns tho original term, passes
to the grantoo.” Tho Court cited tho nbovo caso in 10
Wall, ns deciding that preciso point.

Respondent’s counsel in Gear v. Grosvonor contended
that the assignment of N. Gear to Alonzo S. Gear was de¬
livered before the extension was granted, and that Alonzo
S. Gear did not take thereby n vested legal title, but only
an equitable interest, capable of being perfected by a court

of equity, in the event of a refusal by N. Gear to porfcct it
by a subsequent conveyance.

Remarks on the case of R. R. v. Trimlle , 10 Wall. 857.

In tlio also in 10 Wallace, tbe court, per Swnyno, .T.,
held tlmt the effect of the contract in thnt case to assign
the expectant 'extension of the patent, had been settled by
the court in Gaylor v. Wilder, which is quoted at length.

The court appear to liavo considered tlint the incipiont
or inchoate right of an inventor to liavo an extension of
his patent oil the happening of a ccrtnin event, is liko the
inchoato right of an inventor (who has perfected his in¬
vention) to obtain a patent, and which right the court in
Gaylor v. Wilder hold to bo the subject of a legnl assign¬
ment (ns to this sco ante, p. 11).

It does not follow, from this decision, thnt tlio assignee
of a projected invention which tlio intonded inventor pro¬
poses to try to nuiko at sotno futuro timo, becomes, by vir¬
tue of such assignment, the legal assignee of tlio invention
as soon ns such invention has been made, far loss thnt he is
evor to be regarded for any purposo whatever ns a legal
assignee nt tlio date of the instrument of assignment.

In a passage in the opinion of tho court ns given by
Swnyne, J., in Railroad Co. v. Trimble, he appears to have
overlooked the distinction botween an assignment of nil
invention not yet made nnd an assignment of a perfected
invention which has often boon treated as property trnns-
ferrnblo nt common law. Thnt distinction was fully recog¬
nized by Chief Justice Timoy in Gaylor v. Wilder. He
held thnt tho inventor, Fitzgerald, hail nn inchonte right to
obtnin a patent, nnd ho says: “Fitzgerald possessed this
inchoate right nt tho time of tho assignment. Tlio dis- .
cover i/ hatl keen made and tho specification prepared to-
obtnin a patent.” Tlio importance of thnt rcinnrk will bo
recognized on perusing Mr. Webster’s nrgmnont in tho S
:ase. . ,

In tho case of tho Railroad-Co. v. Trimble, the court ns-
wne that tho decision in Gaylor v. Wilder was nn authority '

to support tho proposition that tho deed of Howo
Trimble, dated 0th July, 1S44, assigning certain p
which had been granted to IIowc, and also patents
might thereafter he granted to him for iinprovemen
the said patented inventions— with words sufficient t
brace extended terms — was sufficient to transfer tho
title to an extended term, of n patent for nil improve
for which improvement n patent was afterwards gn
dated 2Sth August, 1843. That patent was extended
/ August, 1SG0, for 7 years.

; The facts of the caso of R. R. v. Trimble nre, tlial
' the pntont of 2Sth August, 1840, for an improvomcii
■, been issued, blit before the grant of tho extended
1 the administrator of IIowc, the patentee, assign
51 Trimble, by deed, dated 15th September, 1834, the
\ iiitorcst in tbe patent of 1S4G, for thu iinprovemcnt,

:j lie held in the other pntonts. So that Trimble held a
titlo under tho patent for the iinprovemcnt which line
I mndo subsequent to tho original deed of 9th July,
i and Trimble's right to the extension of tlint patent 1
f from tho conveyance of the patent by the deed of
September, 1854, coupled with the terms ol the or
deed, which were sufficient to embrace an extension.
Rnilrond Company claimed under nn adverse assign
mndc prior to the assignment of 15th September,
but tlio jury found thnt such prior assignment had
abandoned nnd was inoperative.

In tho present case, so tarns the issue of the pnti
concerned, tho question is simply whether the nssigi
nn invention, not made at tho time of tho assignment,

, nssigniio within tho meaning of the Act of 1S70, sc
not whether such nssigneo is, after tlio pntont hash
issued, mi assignee within tho meaning of sec. 30 of
'same act.

In the controversies in tho courts respecting tho pat
alter' it shall have boon issuod for tiic invention of
qiindniplex, tho question will como up for dotorminnt

whether, on tho- authority of tlio cnso in 10 Wallace, an
assignment of an invention beforo it is made, will tnko
. legal o fleet after tho issue of tho patent. If it bo liuld to
do so, tho assignment to Harrington being prior to tho
assignment to Prescott, the former must prevail if it bo
held to embrace tho invention.

According to Judge Story’s decision in tho case of Her¬
bert v. Adams, 4 Mason, 16 (quoted beforo in this brief, p.
10). an assignment of an invention not patented, takes
oftcct when the patentee issued, and operates by way of
estoppel against the assignor. n0 is probably speaking of
an invention perfected, although not patented. It is set¬
tled by lator decisions that, in such cnso the assignment
acts directly on tho legal title, and not merely by way of
estoppel, lint it is nowhere laid down that where an in-
tended invention is assigned, tho assignment will take legni
o ee as soon as the invention is nindo, and bofore patent
•ss.,0.1. l|,o instrument is a more contract. Nor after
tno patent has been issued, would the assignment have a
retroactive efleet, except as against tho assignor himself.

V V , e"'0!>ptive effect, see Field v. Mayor of N. Y.

(0 N \ . no), quoted before in this briof, page IX »

1 here are some eases in which tho courts will probably

cognize die dlst"lction between an assignment of an in-

ven ion already made and an assignment of an invention
ot jet made. According to Curtis on Patents, this dis¬
tinction is recognized by the Patent Act in the clause au¬
thorizing the issue of tho patent to tho assignee (Curtis on
P tents, see. 183, note 2). I„ considering this question, it
horn* ° lm,,ortnnt to "otieo the decisions on the distinction
bet ee grin tot a patent right and a license, ns to which'!,

3 Storv° 1 no ’ r’ St0r^’ 5J3 > w"8liburu v. Gould, ,
Cur o’, p7 lmy lm°r> v‘ Coming, How. 210; !
tmrtis on Patents, see. 195. *>>

tinetL^vi V' ^'lrt18l,orn (1™'B Dig- PP- 120, 403) a dis-.*
meat in • '"UJ° ljot"'oe,> »'» assignment and an agree*. S;
soign a patont— that tho party boldiug tho con-

: tract had no authority to grant liconsos : that the patent
must iirst bo assigned to him. See, also, Whoolcr v. Mc¬
Cormick, 4 Official Gaz. Pat. C92.

The Attorney General, Pluck, (Opinions of Attorneys
General, vol. 0, p. 403, Nov. 28, lsfiO) did not recognize
the distinction now in question. Referring to a contract,
whereby A., an inventor, stipulated with certain parties
thnt they should have the ownciship »f all inventions oi
improvements which he might thereafter make upon certain
patents hold by them, Attorney General Black’s opinioi
was that under that contract tho parties referred to won
entitled ns assignees to have the patent for an improveinem
nindo by A. issued in their own names, although tho in
ventor demanded the issue of tho patent to himself. Tliii
opinion would probably lie held ’by the Courts to be erro
\ neons. Seo tho argument ywsf, p.

The Assignment to Harrington, 4th April,

■ 1871, whether it embraces the Qiualrwples.
in its terms.

An important question is, whether the assignment ot 4tl
April, IS71, contains words sufficient to embrace the quad-
ruplex system. The partnership contract of 1S70 does no
contain words importing a grant or assignment, but is n
terms a mere' executory contract. Therefore, it cannot now
be trentod as an assignment, under tlm Patent Act, sec. 33.
And it seems that it cannot lie treated as an assignment
under sec. 30, after the patent has been issued, but that it
is a mere contract to assign.

The assignment of 4th April, 1871, may bo proved to
refer to (although it docs not recite) the partnership agree¬
ment between Edison and Harrington of 1st Oetobor, 1870.
The instrument of ith April, 1871, speaks only of an agree¬
ment on tho part of Edison to invent “ instruments and
machinery that should successfully i 1 ccoi o c 11) do el¬
ope into practical use the Little or other system of auto¬
matic or fast system of telegraphy, and subsequently to

VI' l,uliecc 81,011 instruments and machinery, bv

adding thereto such further inventions ns experience should
demand and my ability as an inventor and electrician
might suggest and permit.”

Tlio contract of 1st October, 1870, was not recorded at
the date of the assignment from Edison to Prescott. 19th
August, 1874.

It will bo observed that the assignment of 4t|. April
1871, does not specifically rofor to tlio contract of 1st Octo-
;ior, 1870, nor to any contract as having been mndo in writ-
"«'• 0,1 ‘'cf erring to tlio contract of 1st October 1S70 it
vdl bo found to include all of Edison’s future inventions’ of '
my kind, except such as were included in certain contracts
letwecn Edison and the Gold and Stock Co. Tlio contract
'raph L°",lnC<l t0 ,,‘v0l,t,0"s feinting to tlio electric tolc-

Jhe Quadruple* is not a « fast ” system of telegraphy,
Iit/un the meaning of the deedofith April, 1871.

Tlie automatic system of telegraphy is called a “ fast ”
yS,L bc L fl B e t be g b ikon ami closed bi¬
fid!!^;, 0p0M ii0" •iS, 1,0,f0,'mc(1 «“•«* Kfentc'r

ft£, .,SrSS:blC f I” “I! systems

1 tclegu.pl, y_ other than the automatic, the speed of the
..mem, s ion limited by the capacity of the operator’s

ltcn nst s ‘ V “ Uy °r ^ b0iml the

uto nil IC system, having the advantage of machine over
and labor, is called the “ fast ’’ system
itlf,r:r “ '“0t,.tm",S",ittud br *1'° Qu"<ln.plox system
•stem o. the 1" 'tiS ^ 11,0 U™C 0r tllu

issioii 0t 101'° 16 Mjr ndditiomi1 Sliced in ti.o trans¬

it has for several years past been customary to sneak of
o automatic system as - the automatic or iLt system.”

Many instances aro given in the brief of Messrs. Ashton,
Lowory & Doubling, pages 18 to 27. On the other hand,
Mr. Harrington rotors (Ilarrington’s Brief, pages 10 to ID)
to articles in “ Tho Journal of tlio Telegraph ” and tlio
“ Tho Telegrapher,” in which the Quadruplox system is
ombraced in tho general description of” last systoms.”

Mr. Harrington argues (pugo 21) that, although in some
eases “ automatic ” and “ fast ” have been used as appar¬
ently synonymous, yet that has only been by parties inter¬
ested in some systom of automatic telegraphy which they
puff ns ” the fust,” and it is observed that, in this souse, Mr.
Harrington has himself call tho “ Little ” system ” the fa el
system.”

Many of tho citations, however, in tho brief of Prescott's
connsol from telegraph litornturo do not appear to be open
to that criticism.

Tho words in the recital of the assignment of 4th April
1871, “ the Little or other system of automatio or fast ays
tem of telegraphy'' relate solely to automatic telegraphy—
tho word ‘‘automatic” is treated therein ns equivalent tc
” fast.” And it is customary to so explain what is meant
by “ automatic telegraphy,” as the word 11 automatic is o
itself insnllicient to describe or characterize the system.

“ Automatic” is defined by Webster thus! " Having
the power of moving itself— applied to machinery.” “ Tin
term automatic is now applied to self-acting machinery, oi
such as has within itself tho power of regulating entirely iti
own movements, although tho moving force is derived from
without.” In the brief of Prescott’s counsel, citations ar<
made (Brief, p. 1C) from tho report of the National Tclo
graph Company in 1807, which contains tho phrase, “/««
or automatio telegraphy

On pngo 20 of tho eiitno brief, is a quotation from t\v<
Reports of the Postniastor Gonornl, speaking of “ the faa
or automatic system.”

In tho sa.no brief (p. 20), rcforouce is made to the eon
tract between Harrington and Little, dated September 22d

1871, respecting wlmt is tliero described as “a system of
automatic or fast telegraphy”

,Tho circular of the Automatic Telegraph Oo., Jamiarv
-Sth, 1874, is also referred to ns containing the passage,
concerning tli o automatic or fast si/slcm."

And Prescott’s counsel make sovoral quotations from
publications relating to the electric telegraph, to show that
tlio rfiyrfea. or “ quadruple*” system is not therein
Tltof'o ^S^tc,n(Pri“tcd Brief of Prescott’s com, sol,
the Pm f’ 2f ' r°" 1>ns° 24 18 “ ,‘orurcilco to the report of
the Postmaster General in 1872, speaking of « duplex » as
doubling the capacity of lines, and of the “ fast” or auto-
mclw system, by which one wire is made to do the work

rer™",^tllrlr"<1, Mr. Harrington (Brief, pp. 18, 10)
efeis to The Telegrapher,” September 20th, 1874, Jami-
TeW lctl*> 1371, and “The Journal of the

Teleginpli, September 15th, 1874, where, in speaking of

dunlcvCo’"8,’ 01 1 fllSt tc,t‘KrnP,ly>” the nutonmtie and the
du,,!^ „ e referred to ns if they were both fast systems.

JZJEzzr’ '* "*" l“" ■ — “«■

Court' Ml th° e0r"'et,°" °f ",e '"ctrument is for the
o. w ’ "07':",eIcSS' W"« 'ta aid the testimony

pi t 2 IT l0?1"'" 'eTr,"6,0l'nrt (i P”reo,ls 011 Contracts,

Dnv V Still’ Vrc'TT" 8 D,fJ- Agreements, B, see. 50 ;

Hay .Stillman, MS. Giles, ,T. Md. 1850).

Where certain terms are used in a grant which have a
''ell known general meaning, that wilUo adopted, unless
appears that a different meaning was intended hr them
(per Ingorsoll, J. Day v. Cary, ut’e Dig! p. S, 1 ^

As to the Appeal to the Secretary of the
Interior .

.assssss i

duties respecting tho granting ami issuing of patents, which
heroin are or may hereafter ho by them directed to bo dono.”
Upon this clausa a question arises whether the Commis¬
sioner is to act ns he may bo directed by tho Secretary of
tho Interior, in any special case, without exorcising his own
judgment in tho matter.

Supposing tho Secretary of the Interior can entertain
tho appeal from tho decision of tho Commissioner in tins
case, directing tho principal examiner to issuo tho patents
to Edison and Prescott, can the Secretary of tho Interior
order tho examiner to issue the patents to Edison alone, or
to Edison and Harrington jointly, and in that case can tliero
bo an appeal from that order to the Supremo Court of tho
District of Columbia? An appeal is given to that Court
by tho act. of 1870, see. 4S, from tho decision of the Com¬
missioner in the cases thoroin referred to; but no appeal is
given to or from tho Secretary of tho Interior, in any case.

Tho Patent Act, see. 52, provides “ that whonovor a
patent or application is refused for any reason whatever,
cither by the Commissioner or by the Supremo-Court of the
District of Columbia, upon appeal from the Commissioner,
tho applicant may have remedy by bill in equity see re¬
marks on this section, Hull v. Commissioner ot Patents,
Supreme Court, D. C. Ollicial Gazette, vol. 7, p. o59).

Under this net, a suit may be brought by Edison against
Prescott to test the question whether Edison’s application,
as it now stands, is lawfully refused. If the a lj I t on
bo in favor of Edison, the Commissioner wd bo thereby
“ authorized” to issuo the patent to him. Tin* suit may
bo brought in a Circuit Court of the United States on
notice to adverse parties.” But the question before t o
• Court in such case will not bo as to the equities of lie -
ties. but will iio as to tho legal right of Edison to demand
the issuo of tho patents to himself alone.

By tho act of 1880, sec. 1, it «• made the duty of
Commissioner of Patents, “ under, the thredums of theSe c-
retan, of State,” to superintend and perform all acts touch-

ingtho granting of patents. Tho Secretary of the Interim
therefore, merely tnkos the place of tl,o Secretary of Stat
mulor the former law. J '

on J,la„Cft f'1’ lm> eh- 108 e state. „t Large

dJ. ), enacts that the Secretary of tl.o Interior shall oxer
e.»e and perform all the acts of sujternhwn ,n„l anneal i,
legard to the oflico of Commissioner of Patents now exer
cised by the Secretary of State ”

1,10 - 'O whether it

JsASBSfr" * “n lr0nr’ Att0r"^ Gone™'

timates I , f AMo™cys Ge"eral- vol. 13, p. 20), ho in¬
fer revisinir tl'.o'T ''VT'* ,nndo ““I** Provision
ca es I, 7 t.1'0,.(I.C0l8,0,ls of ‘>'0 Commissioner in proper
C Bio . oV mp m.J'’.tl10 ImrticS ™'"l>l«iningof the dc-

&-^“S=SSs:

ignatnro to a patent l a ?PW S?"!"":y withhold his
»■. » *» ,« «», .

In Whitoloy v. Fisher (4 Fish. Pat. Cns. 248), an
tion against the Commissioner lor rotusmg to issue
patent, it was held by the Supremo Court ot the Disti
of Columbia that the duty of issuing patents devolves tt|
the Secretary of the Interior— the duty ot countersign
and affixing the seal of office to a patent, upon the Com.
sioner. ....

On referring, however, to section 31 of tlie net ot u
it will bo seen that it is the Commissioner who is to doi
oti the application lor the patent. “ The Commissu
Ml came «« examination to bo made of the alleged
invention or discovery, and if, on such examination, it,
appear that the claimant is justly entitled to a paten
dor the law, and that the same is sufficiently use lul ami
portent, the Commissioner shall issue a patent theiefo,

The act (section 21) retpiires patents to be signet
the Secretary of the Interior and countersigned by the
missioner.” In 1 lull v. Commissioner ol Patents (7 Ot
Gazette Patents, 561), Judge 01b. says that the Sec
of the Interior really controls the issuing. .

the same case, says : “It is the duty ot the Commrn
alone to say whether the patent shall be allowed
If, however, the Secretary ol the Intone, should
opinion that he has the power, and th it it is
any particular ease to exercise that powei, o om
merits of any decision of the Commissioner o
might, upon such revision, decline to sign the i mUi it *
by the Commissioner, lie might, at the b
gLt to the Commissioner that he should reeonsulc. th
If, upon such reconsideration, ho should 111

conclusion ns the Secretary, then .the patent woiddbc
but if' the Commissioner should rota... ;>6.to‘ ^ l
no patent would bo issued, and the applicant «o,,ld
to Ids remedy by appeal to the Supreme Court of tl,
triet of Columbia, or an appeal under section 52,
appears to ho incompatible with the idea P

jurisdiction in the Secretary of the Interior. ,

iSyksp-

ary power to withhold his signature to a patent which tho
Commissioner lias legally ordered to bo issued, can bo testod
by mandamus. A writ, of mandamus , however, will not

be allowed by tho Supremo Court of the District of Colum¬
bia against tho Commissioner of Patents, whore the lnw
submits tlie subject to his opinion (U. S. v. Bigolow, 7 Off.
Gnz. Pat. 001).

It may be contended that the signature of the Secretary
is required merely ' for. the ptirposo of verification. Tlio
question whether lie can refuse to sign a patent which, on
tho faco of the proceedings, appears to lmvo been properly
issued, may bo of importance in interference eases, whore a
party having a patent may desiro to prevent tho -issue of
another patent to his adversary. That might present n
proper case for an application for a mandamus, ns tho ap¬
plicant would otherwise bo without remedy.

The Secretary niny with propriety examine jurisdictional
questions, and refuse his signature whore tho Commissioner
has exceeded his jurisdiction. Even if tho Secretary lias a
discretionary power in relation to tho grant of a patent, it
does not follow that tho Commissioner’s concurrence can bo
dispensed with, seeing that section 31 of the act directs him
to decide the question.

Allowing that tho Secretary has tho right to withhold
his signature, in a case where tho Commissioner has noted
within his jurisdiction, it is to be presumed that ho would
not do so in a doubtful case, and that, in deciding the ques¬
tion whether lie should refuse to append Ids signature, lie
would not undertake to exercise full appellate jurisdiction
and receive any additional ovidcnco in the case, but would
merely decide upon tho enso ns mndo beforo tho Commis¬
sioner. Even wlioro hppellnto jurisdiction is given to tiio
Supreme Court -of the District of Columbia, the enso is
heard on tho ovidunco beforo tho Commissioner.

The Secretary of tho Interior might with propriety sug¬
gest to tho Commissioner that thoro nro somo important
points wliioli wore overlooked in tho nrguinont'boforo him,
and that thoro should bo a rehearing on those points (seo
post, p. ).

The Equities of the Case.

The contract between Edison and Prescott, dated 19th
August, 1874, provides that they shall have an equal inter¬
est in “ any future improvements" mndo by elthsr party.
And Prescott agreed to pay “all the future expenses and
cost of specifications, drawings, models, Patent Office tees .
and patent solicitors’ and agents’ fees,” &c. The W. U.

Co. claim that tlioy employed Edison to mako the invention
for thorn, and they, at tl.e same time owning the principal
patents for the “duplex” system, and that they gave Inn.
the use of their linos and telegraph apparatus for the ex¬
periments, and that Prescott (tl.cir electrician) rendered
much valuable assistance therein; also thatHarr.ngton
was cognizant of Edison’s relations with the VT. 0, and ot
ids efforts to make tho invention of the qimdruplcx foi
them and tl t 1 e =el .o ejections, before the pay-

mC ^1’ -vcrul

reasons are urged why it does not affect Prescott, viz. .

1. That it does not in torms embrace the quadruplex.

2. That the record of that contract was not legal notice of .

its contents — there being no legal authority to .e-
cord it when it was recorded.

madcmid consequently cannot be regarded as an
“ assignment." . ...

the assignment of 10th August, (;hUl

that if tlio equities of t'.w case be found

the Commissioner could , d ^

that Harrington has no case to proxi b ■

1 assignment' to Prescott.

As to tlio rail valno of Prescott’s engagement to grant
to Edison onc-lifllf port of nil inventions of improvements
which miglit he mndo by him (Prescott), it is impossible to
estimate it. Neither can wo form n correct judgment of
the valuo of Prescott’s assistance in the development of the
invention with the nid of the telegraph nppnrntns nnd lines
of tho 17. U. Co., nor can wo make nil accnrate estimate of
the importance of the fact that the 17. IT. owned tho “Du¬
plex ’’ patents. Prescott’s connection with tho 17. U. might
possibly ho of great advantage to Edison. Edison was not
drivon by poverty to mako tho contract with Prescott.

With respect to tho point tliut tlio contract between
Edison and Prescott is a partnership contract, dissolublo
at tho will of either party, and therefore that Edison could
rovokc tho authority ho had given to the Patent Office to
issue the patents to himsolf nnd Prescott jointly.

In tho first place, it is clonr that Edison cannot nullify
the assignment to Prescott. That remains oven if tlio con¬
tract for the joint disposal of tho property lie broken up.
And, secondly, it is true that tho nnturo of the contract
ail'ords a good reason for Edison’s revocation of tlio author¬
ity given to the Patent Office in favor of Prescott. But
then, no reason whatever need be given to tho Patent
Office by Edison for breaking his engagement with Pres¬
cott, that he (Edison) would request the issue of tho pat¬
ents in a particular form. Edison had tho absolute right
to withdraw or modify his applications for tho patents in
that form.

Withdrawal of the Applications for the Pat¬
ents, and Renewal of Applications, ivith
Amendments.

In tho argument before tho Secretary of tlio Interior,
General Butler insisted that tho patents should be issued
neither to Edison and Prescott, nor to Edison nnd Har¬
rington, but to Edison alono. Before, however, tlio patents
can ho issued to Edison alone, an application for such is6UO

must bo filed by him. Tho present application istortli
issue to himsolf and Harrington.

If the Commissioner shall refuse to rehear tlio case o
tho now points, or should, upon such rehearing, adhere I
his former opinion, and if it shall then he considered tin
no appeal lies to tlio Supremo Court of tlio District i
Columbia, it may bccomo advisable * llJ
all tho applications for the patents, and file fresh npphe
tions, with amendments.

An application for a patent may be withdrawn by tl
inventor and renewed in amended form. Under the A
of 1S30, sec. 7, it was a common practice to withdraw t
application in order to get hack part of the too. The rig
to withdraw tho fee was taken away by tho Act ot 1801,
88, sec. 9. Upon tho Act of 1330 Attorney General Cu
ing gave an opinion that “every applicant lor a patent
a riahl to withdraw his application, and demand the
torntion of two-thirds of the patent fee, altoi Ins app
“on is complete ... 1 -11 b ' to1

been had on his application as after 't f

■ (Tarrish & Keeler’s Case, 7 Opm. 391 ; L i" » digest,
Tho right to withdraw the application remains just
same, although no part of the lee is now returned, li e

ventor may choose to make essentnil aniom inon 8 '

. . . 1. - ■:*,! r.

his assignee. • . p,,,

u,,dn |«

‘ tlio formor applications which wo^ l j „

claim of Prescott will then rest entirely on the assignment
of 19th August, 1874, end tho authority thoreby given to
tho Commissioner of Patents to issne the patonts to Edison
and Prescott. That authority is confined to tho applica¬
tions numbered 91 to 100, for although it is declared that
tiio other inventions therein referred to “ nro included in
tin's present agreement,” tho authority and request to tho
Commissioner does not embrace them.

As to the effect of the withdrawal of the applications
for tho purposo ot presenting amended ones. It may be a
breach of tho agreement of 10th August, 1871, in which it
is recited and declared tiint Edison “has oxccutcd oris
about to oxecute applications” for patents, nnd tiioso appli¬
cations nro specified, numbered nnd dated 19th August,
1S71. Put tho Commissioner has nothing to do witli tho
breach of coreiinnt. When the new applications nro filed
with now -specifications, Prescott may possibly contend
that tiie inventions described thcroin nro embraced in the
assignment of 19th August, 1874, nnd that although the
several applications may be consolidated into a fewer num¬
ber, nnd may ombrnco inventions made prior to thoso de¬
scribed in the applications numbered 95 to 100, nnd other
inventions made subsequent to the dnto of tho assignment
19tli August, 1871, yet that under that assignment lie is
legal nssignoo of a tnoicty of tho inventions specifically
referred to in that assignment. If the amendments were
merely colorable, tho legal title of the assignee of the inven¬
tion might not bo affected. But if tho pntents nro in part
for inventions not embraced in the assignment, it will bo
for a court of equity to grant appropriate relief against tho
inventor. Or where tho invontor lias obtained the patent
for tlin purposo of dofratiding his assignee, tho patont
might be repcnlcd on scire facias (soo Mowry v. AVhitnoy,
11 Wall. 131), and the invontor could bo compelled by dc-
creo of a court of equity to make the proper application for
a patont. Equity can roliovo whore a party fraudulently
or without duo authority, blends his own property with
that of another.

As to tho effect of tho withdrawal of tho npplientio
Whether it could bo considered ns an abandonment
law’s Dig. p. 163, “Withdrawal of application, effect

Tho Patont Act, section 35, provides that “ wliei
application fora patent has boon rejected or t li
prior to tho passage of this net, the applicant shall hav
mouths from the dato of such passage to renew his np]
tion or to filo a new one, and if ho omit to do oithei
application shall bo hold to have been abandoned. 1
the hearing of such renewed application, abandonment
bo considered nB n question of fact.”

law’s Dig. p. 153, sec. 5 : “ The withdrawing an f
cation, nnd receiving back tho allowed part of the p
foe, will bo considered as a final abandonment of the
ther prosecution of the claim, * * * which ennn

• revived by any now application” (Mowry v. Barber,
App. Ons. Morrell, .T., D. C. 1858).

Seo. 0. “The withdrawal of an application alter ri
of part of. tho patont feo is not itself an abnndonmc
dedication of one’s invention to tho public, but is an c
ocal act, to be interpreted by surrounding circuinsti
and to bo affected upon a second application by the f
quent conduct of tho party, his diligenco or ins nogloc
delay, in tho same manner as bis conduct is to be we
in regard to an original application (Wickershain ' . o
App. Cob. Merrick, ,T.; D. O. 1859). .

Seo. 7. The samo judge held, in 1800, m tho ci
Dcdcrick « parte, MS. (App. Cas.), that where the
withdrawing nu application took no further action
number of years. “ a subsequent application tor a pan
the same invention will bo refused, on the ground ol
abandonment.”

Seo. 8. And Judge Merrick also held that a

might filo another application several years after Ins
drowal, if that was occasioned by a mistaken reject

tho Patout Office, although in. tho moon tiino the my
liad gone into public use, nnd that tho second nppl.i

by operation of law, relates back to the date of the first ap¬
plication, so ns to cat off the forfeiture which otherwise
would have happonod by. the long intermediate public use'
(Hayden ex parte, MS. Merrick, J., 1800).

iVo may contoud that the Commissioner made a mis¬
take in refusing to issue the patents to Edison.

Dunlop, J., held in Simpson ex parte, MS. (App. Cas.
ISO! ; Law’s Dig. p. 154, sec. 11) that the renewed appli¬
cation in such case should bo made within two yenrs.

' Patent Office Register, April 13th, 1873, p. 41 1, Acting
Commissioner of Patents Timelier refers to the practice of
tlie Office in relation to “ old rejected and withdrawn cases,
in the Office,” as pendente lite embodying claims not finally
adjudicated, and presenting tho proper channel for semiring
rights, not to bo held ns abandoned, except upon proof of
the fact. So they wero regarded by the Office, for some of
them wero from time to time revived, and nllowcd to go
to patent.

lie refers to tho Patent Act of 1S70, sec. 35, ns sanction¬
ing tlint practice, mid cites Godfrey v. Emncs (l Wall. 317)
ns deciding tlint a now application is to be considered ns a
continuation of li former one. The Court there held : “ If
an applicant lor a patent withdraws lus application for a
patent, intending at the time of such withdrawal to filo a
new petition, and accordingly does so, tho two petitions
are to be considered ns parts of tho same transaction, and
both ns constituting one continuous application.”

For a construction of section 35 of the net of 1S70, sco
Marsh v. Sayles, 5 Fish. 010 ; 2 Off. Gaz. Pat. 340 ; 2 Biss.
321.

The proper course to pursue will be to withdraw all tho
applications, and then blond tho invention described in the
early application made by Edison witli tlioBo described in
the specifications referred to in tho contrnct of 1 0th August,
1874, and also blend with thorn the inventions which had
not boon perfected at that date. Out of these consolidated
together, mnko one, two or more specifications.

As to what an inventor may claim in ono patent, sco

Wheeler v. McCormick, 4 Off. Gaz. Pat. 092. In tho same
case, it is held that an invontor may have distinct patents
for several distinct devices, although lie may have included
thorn all in one, making a separate claim for each dovico
(Rules of tho Patent Office, 15, 10). Where several inven¬
tions relating to the same subject are necessarily connected
each with the other, they may bo claimed in ono applica-

Two distinct improvements in tho same macliino may
ho jointly applied for and covered by ono patont (Adams v.
Jones, 2 Pittsb. 73; Abbott’s National Digest, vol. 0, p.
355, sec. 198. Sec, nlso, tho following cases : Emerson v.
Ilogg, 2 Blotch. 1 ; Pitts v. Whitman, 2 Story, 009, 021 ;
Moody v. Fiskc, 2 Mason, 1 12).

In Abbott’s National Digest, vol. 0, titlo Patents, secs.
193 to 223, innny decisions ill abandonment arc collected,
amongst others tho following: § 220. An inventor, whose
application wns rejected and withdrawn ■■■ 1851, delayed
to renew it until 1SC9. In 1S59, a patent was granted to
nnothcr party. Held, a case ot abandonment. (Marsh \.
Sayles, supra). § 213. An application was rejected ; ten

yenrs afterwards a now application ■■■■•J" . 1

fee paid; in the mean time the invention had gono into
public use. Held, nn abandonment (Bovin v. East Hamp¬
ton Bell Co. 9 Blotch. 50 ; 6 Fish. 223).

Tho above cases seem, to show that it would be safe to
withdraw Edison’s present applications, with a view to the
presentation of amended applications, ns above- suggested.

It is understood that there is nn important application
now pending, which wns filed in tho year 1873, on tho part
of Edison, for a patent for devices applicable to tho qundrii-
plex system, which arc not embraced in tho applications in
which Prescott is interested. This invention should bo
blended with those of later ditto on the new applications tor

P By abandoning the presont applications and specifica¬
tions, and obtaining patents on n new set, the great diffi¬
culty in relation to Prescott’s claim of a legal titlo to ono-

half of tho patents mny he avoided., In that cnso, instead J
of a legal title, which it would not ho easy to. assail, ho will £
have only a claim of right in equity to enforce tho agree-
incut between himself and Edison, in such a way ns to ob¬
tain some interest in tho patents issued on’ tho substituted
specifications.

If patents should bo ohtainod on tho specifications now
on file— such patents being issued to Edison alone — Pres- /

cott would claim a moiety under tho assignment, and insist
on bis legal ownership, on the authority of Gaylor v. Wil¬
der (supra).

Prescott would refuso to join in n suit against tho W. U-
for using tho in volition . If a suit were brought by Edison’s
assignee, it would bo objected that no assignment could bo
made by Edison without Prescott’s consent. And if Edi¬
son were to bring suit against Prescott mid the W. U., tho
defense would bo tho contract for the sale of tho invention
to the W. U. On the whole, thoroforc, it would appenr to
ho tho best policy to cut adrift from the present position in
tho Patont Oflico. . .<

A question remains whether Edison would bo violating $
tho injunction in tho New Jersey caso, by withdrawing his
present applications in tho Patont Oflico and filing fresh
ones. Tho only application actually pending at this time,
as we viow tho case, is that of Iinrrington. Upon tho with¬
drawal of that, tliero will bo no application in tho Patent
Otlice. The injunction docs not, in torms, restrain Edison
from taking the proposed proceedings in tlio Patent Oflico.

Decision of the Commissioner of Patents

DIRECTING CERTAIN LETTERS-PATENT
ISSUE TO EDISON & PRESCOTT.

SMITH & REDINGTOH,
Of Cou

tion of Harrington, who nllogod that tho patents should
- bo issued to Edison und himsolf, instead of Edison and
Prescott.

Tho ease presents two questions for consideration :

1. Has tho Secretary of tho Intorior tho power to lienr
and determine whether ho will oxccuto tho pntonts to
Edison and Prescott; or is lie, in this regard, merely n
ministerial officer and by law required to unite with tho
Commissioner in tho execution of tho pntcntB and bound
by his decision ?

2. If lie has sucli power, should tho letters be issued
to Edison and Prescott?

Hpon tho first point it is proper to stato thnt it has
already boon determined by your immediate predecessor.
He decided, aftor full and elaborate argument by tho
ablest of counsel, thnt ho had such power, und overruled
the motion to dismiss tho proceeding for tho want of
jurisdiction and directed the parties to filo written briefs
upon the merits. Wo suppose thnt his action mnkes this
question res adjiulicata.

But if the Hon. Secretary should diflor with us, then
wo insist that the former decision was correct. Its fur¬
ther consideration will require an examination of tho
legislation of Congress. Section 441 of tho Revised Stat¬
utes charges the Secretary of tho Intorior with tho “su¬
pervision” of “patents for inventions.” Section 4883 re¬
quires that all letters patent shall ho signed by tho
Secretary of tho Interior; and section 481 provides thnt
“the Commissioner of Patents, under the direction of the
“ Sccrctari/ of the Interior, shall superintend or perform all
duties respecting tho granting and issuing of patents
directed by law.” The first duty in tho order of time,
and tho most important ono, is to determine whether or
not the applicant is entitled to a patoiit. . . .

If this is to bo done “under the direction of tho Sec¬
retary of tho Intorior,” how can it ho said that lie hns no
power to considor tho question ? Ho is tho head of tho
Interior Department. That Department is ohargod by
law with tho issuing of lettors patent. All patents are to
ho signed by tho Secretary and to bo granted and issued
under ids direction. • Can it be possible that ho can have
no voice in the mattor? Thnt ho is a mere automaton,
moved by some othor power and without ability to con¬
sider and decide for himsolf? Suppose that, by some
means, by inadvertence or otherwise, a patent should be
executed by tho Commissioner for tho spread of soino
contagious disease, must the Secretary also execute it?
He certainly must if ho is but a mere ministerial officer,
and is bound by the action of the Commissioner ; and if
lie should refuse lie could ho compelled by mandamus
to do it.

Wo wholly dissent from any such view. We suppose
that Congress menut just what it said; and when it snid
that “ all duties respecting tho granting and issuing of
pntonts ” shall bo performed by the Commissioner “ un¬
der tho direction of the Secretary of tho Intorior,” it
meant that all tho duties should ho thus performed, and
did not mean, ns is argued by counsel for Prescott, that
the Secretary should be charged with tho duty only of
seeing that tho Commissioner faithfully discharged
his duties and did not refuse to make n decision.

Sucli a limitation of tho authority of tho Secretary is
against the plain language of tho statute, and is, as we
think, in conflict with tho ruling of the Supreme Court
in an nnulagous case.

In Barnard’s Heirs v. Ashley's Heirs, 18 How., 44,
the question was as to tho power ot tho Commissioner
of tho General Land Office to review a decision made
by tho Register and Receiver. Tho court said : “Ac-

« COrding to the conceded foots, it ,s insisted, on 1 part
«o? Ashley and Craig, that the -Register and Re eivor
„uvil,, o, duo proof and examination, rojectod Bar- .

“ nard s claims' toFi preference of entry of the four qnar-
„ tor sections, lie is thereby concluded from setting hem
« up in a court of equity, because the Register and Re¬
ceiver acted in a judicial capacity, and ‘heir judgmwit
tn tm imnea!. is conclusive of the chum.
..S: cal of Jacksmi v.’ Wilcox, and Lytle , The
‘•State of Arkansas, are relied on to maintain this posi-

“Tliis power of revision is exercised by virtue of the
» act of July 4,1836, § 1, which provides ‘ that, from and
“ after the passage of this act, the executive dutl°8 10"
“prescribed, or which may hereafter be prescribed by
“ Faw, appertaining to the surveying and sale of the pub-
“ lie lands of the United States, or in anywise respecting
“such public lands, and also such as relate top
“ claims of land and the issuing of patents for nl grn «

“ of- land under the authority of the Government of the
“United States, shall be subject to the supervision and
“control of tbe Commissioner of the General Land
.. Office, under the direction of the President of the
“United States.’ The necessity of ‘supervision and
“ control,’ vested in the Commissioner, noting under the
“direction of the President, is too manifest to require
“ comment, further than to say that the facts found in
“ ,bis record show that nothing is more easily done than
“apparently to establish, by rz parte affidavits, cult, va-

“ tin., and possession of particular quarter sections of land,

“ when the fact is untrue. That the act of 1836 modi-
» ties the powers of Registers and Receivers to the extent
“ of the Commissioner’s notion in the instances before
“ us, ice hold to be true. But if the construction of the
“ act of 1886 to this effieut wore doubtful, the practice

: under it for nearly twenty years could not be disturbed
without manifest impropriety.

“ Tho case relied on, of "Wilcox v, Jackson, 18 Pet.,

; 611, was an ejectment suit, commenced in February,

1 1880 ; and as to tho acts of the Register and Receiver in
‘allowing the entry in that case, tho Commissioner had
1 no power of supervision, such as was given by tho act
1 of July 4, 1836, lifter the cause was in court.

“ In the next ense,” (Lytlo v. Tho Slate of Arkansas,)

• 9 How.,' 838, all tho controverted facts on which both
‘ sides relied lmd transpired and wore concluded before
‘ the act of July 4, 1836, was passed; and therefore its
‘ construction, as regards the Commissioner’s powers

• under the act of 1886, was not involved; whereas, in
‘ the case tinder consideration, the additional proeoed-
‘ ings were had before the Register and Receiver in 1887,

‘ ami were subject to the new powers conferred on tho
‘ Commissioner.”

Tho act of 1836, above construed by the Supreme
Court, is very similar to the' one now' under considera-
;ion. It gives to the Commissioner “supervision and con¬
sol.” This gives to the Secretary “supervision and direc¬
tion.” Tho terms are synonomous. The former con¬
tains tho words “ executive duties.” Under this phrase¬
ology it might bo claimed, with considerable plausibility,
that tho “ executive duties” referred to were ministerial
only, and did not include tlioso that were judicial in
their character; whereas tho latter, in clear nnd express
terms, relates to “ all duties respecting tho granting and
issuing of patents.”

Wo rely upon this case ns high authority for tho con¬
struction which wo maintain.

The learned counsol for Prescott objects to this con¬
struction, bccuuso, ho says, that under it, tho Secretary
could disregard tho decision of tho Supremo Court of

tho District in n ease appealed to it (when the patent ^
hurt been refused by tlio Commissioner), or tbo rtceision
of tbo Circuit Court upon bill in equity tiled under sec¬
tion 4915 of tho Revised Statutes. We do not agree
with this view.

It is evident that Congress intended that tho remedies
referred to should tie special, and tho decisions of said
courts tinnl and conclusive upon nil the parties in inter¬
est, and upon all the otlicers who are required to issue
tho patont. In tbo ease of tho appeal to the Supremo
Court of tho District it is expressly provided that the
decision of the court “ shall govern the further proceed¬
ings in tho case.” Of course that would require tho
Secretary to unite in the execution of the letters patent.

In the onso of the bill in equity it is provided that
“ such adjudication, if it bo in favor of the applicant
shall authorize the Commissioner to issue such patent on
the applicant tiling a copy of the adjudication.” It is ap¬
parent that tho word “ authorize ” is UBod in n manda¬
tory sense.

If the Secretary has tho power of “ supervisi
“direction ” in all matters relating to the granting and
issuing of patents, ns we have attempted to show, then
he lias the power to exercise that “supervision ” and

“direction” as ho, in his discretion, may see fit.

Ho is not required to wait for a final dccisiou of any
matter before the Commissioner.

PcrhnpB it would bo wiso in him to adopt that rule,
but lie is not bound to do it. Ho may exercise the power
in relation to preliminary orders. In tho case at bar bo
did not do it until the Commissioner had decided to whom
tho patent should issue. .

That decision was not made until , it had boon deter¬
mined in his ofllco that thoro wore no interferences.

There could bo none thereafter unloss sc
it should file an application claiming the ss
tion that Edison claimed, and tho eluinocs of that hap-
' poniug, were not one in ten thousand.

Practically, therefore, tho decision of tho Commis¬
sioner was final. There is nothing in the record to indi¬
cate the contrary, and we suppose that the Secretary will
not go outside of the record to discover orders made by
the Commissioner.

The conclusion which wo have reached is that the Sec¬
retary has the legal right and power to “ hear and deter¬
mine ” for himself whether he will oxoento the patont to
Edison and Prescott.

Wo do not say that ho should reverse the action of
the Commissioner and direct him how he should issi
the patent. It is not necessary that that question should
be determined in this case. But we do say that ho
cun legally refuse to unite with tho Commissioner, and
that brings us to the second inquiry whether the letters
pntent should be issued to Edison and Prescott.

The assignment to Harrington was prior to that to
Prescott. It clearly included tho improvements in quos-

Prcscott had notice of it when ho took his assignment.
If tho inventions wore in esse, at the time of the assign-
o Harrington, it is clonr that they passed to him.
There is nothing in tho record to show that they wore
not then in existence. But lot us assume that they wore
not, nnd we yet maintain that thoy wore transferred to
Harrington nnd that he has tho prior nnd better right.
In support of this, wo dosire to call tho attention of tho
Hon. Secretary' to tho case of Trimble v. The Railroad
Company, 10 Wall. 807, which is analogous to tho one
undor consideration, nnd is founded upon the following

Oil the 10 th of July, 1840, one ITowo line! obtained a
patent for constructing the truss frame of bridges. On
the 8d of August, 1840, ho obtained n patent for an im¬
provement on the same.

On tlio 0th of July, 1844, ho assigned to Isaac R.
Trimble, all bis rights in the above patent for certain
States, including Maryland. This assignment was duly
recorded, and conveyed Howe’s right in tlioso words:
“All tho right, title and interest which I have insuitl in¬
vention as secured to mo by said letters patent ; and also all
right, title and interest which mag be secured to me for
alterations and improvements in the same from time to time,
****** the same to bo held and enjoyed by tho
said I. It. Trimble, &c., to tho full end of tho term for
which said letters patent are or mag be granted, as fully
and entirely as the same would have been held and en¬
joyed by mo had this assignment mid sale not have been
made.”

Howo afterwards, and on the 28th of August, 1840,
obtained nnothcr patent for an improvement in tho man¬
ner of constructing these truss frames, which Inst named
patent was extended for seven yoars from tho 28th of
August, 1800.

Tho defendant, tho Philadelphia, Wilmington and Bal¬
timore Railroad Company, during the yenrs 1804, 18G5
and 1800, that is, during the term of the extension of
the patent, made use of tho improvement of Howe, in
constructing certain bridges in Maryland. Trimble
brought suit to recover damages for the unauthorized
use of this improvement. The validity of the patent,
was not questioned. Tho point mndu by the defendant
was that tho assignment of J uly 9th 1844, did not pass
title to tho extension of tho patent of 1846.

Prom tho abovo statement it will bo seen that the ac¬
tion was for an infringement of tho improvement of

1846; that this improvement was not in existence at tho
date of tho assignment by Howo to Trimblo of July 9tli,
1844, and that Trimble had no legal right to tho im¬
provement or. its extension, unless it was given to him
by’ tho assignment of 1844.

Tho purchase and . assignment of a patent gives no
right to the assigneo to use and enjoy an improvement

subsequently mndo upon, that patent. He must also

purchase tho right to use tho improvement. Ho authori¬
ties are necessary upon so plnin a proposition: There¬
fore in the caso under consideration it was necessary, in
ordor that Trimblo should be able to maintain his notion,
to hold that ho had acquired, by tho terms of his n^roe-
mont with Hpwo, a legal right to all subsajuent improve-
meats upon his original ..patents,, and not only that, but
also n right for all terms for which the original or im¬
provements should bo extended, nnd so tho Court did
hold.

Swnyne, Judge, in delivering the opinion of tho Court,
said: “The deed from Howe recites that ho had obtain-
: “cd from the United States two patents for now nnd
“useful improvements in tho construction of truss
“bridges and othor structures, ono dntod.on tho 10th of
“July, the other on the 8d of August, in tho year 1840.

“ Tlie instrument is a deed poll. After setting out the
“consideration, it proceeds us follows: ‘I have nssigned,
“sold nnd set over, all tho right title nnd, interest which
“1 have in said invention, ns secured to me by said letters
“ paten t, and also all right, title and interest which maybe
“ secured to mo for alterations and improvements on tho
“ snmo from time to time, for, to, and in tho following
“ States, viz, Ac., * * * * tho snmo to be held nnd
“ enjoyed, by tho said I. R. Trimble for his.own use and
“ behoof, nnd for the use and behoof of his legal ropro-
“ sentatives to the full end of tho term for which said

time, * * * to bo hold and enjoyed * * * to
tbo full end of the term for which said letters patent are .
or may bo granted.”

In the latter it is: “Whereas I, * * * , did Btipu-
lato and agree to invent and construct for the said Har¬
rington full aud comploto sots of instruments and ma¬
chinery that should successfully nnd economically de¬
velop into practical use the Little or other system of au¬
tomatic or fust system of telegraphy, and subsequently
to improve nnd perfect such instruments and machinery,
by adding thereto, from time to time, such further in¬
ventions ns experience should demand nnd my ability ns
an inventor nnd electrician might suggest nnd permit.

* * * How, therefore, * * * I * * » ]>0rcby
assign, set over, nnd convey to him, tho said Harrington,
two-thirds interest of nil my said inventions, including
therein all my inventions of mechanical or copying
printers, nnd of all the patents for nil such inventions
and printers, whether already issued, applied for, or to
bo hereafter applied for, and of nil and whatsoever of
my inventions and improvements, mndo or to be mnde,
of all the patents that may be issued therefor that are or
mny be applicable to automatic tolcgrnph mechanical
printers.”

We think that the construction adopted by the Supremo
Court is conclusive of this case, nnd .following and ap¬
plying it to tho present case, claim that tho assign¬
ment to Harrington covcrod tho inventions in contro¬
versy, und that, his rights aro superior to tlioso of Pres¬
cott. ■

There is another point to which wo desire to call the
attention of the Secretary. It is well settled that an as¬
signee is not entitled to a patent unless bo has an assign¬
ment of tho entire interest in tho invention.

" It is conceded that Prescott hns no such assignment;

« letters patent are or may be granted, as fully nnd entirely
“ ns tho samo would have been hold nnd enjoyed by me
« had this assignment and sale not have been made.’ A
“ careful analysis of these provisions eliminates tho fol-
« lowing results : Howe assigns to Trimble all his title
“and interest in, tho inventions seenred to him by tho
“ two patents mentioned, in respect to the territory
“specified, nnd also all tho right and title which should
“ bo secured to him for alterations nnd improvements in
“ the inventions, from time to time thereafter, for tho
“ same territory, to be hold nnd enjoyed by Trimblo to
“ the fall end of the terms for which patents had been
“ theretofore, or might bo thereafter granted, in all rc-
“ spects as they would have been held and enjoyed by
“ tlie assignor if the assignment had not been made.”

“ The language employed is very broad. It includes
“aliko the patents which hail been issued, nnd all which
“might be issued thereafter. Ho discrimination is mnde
“ between those for tho original inventions, and those
“ for alterations and improvements, nor botween those
“ which were first issues nnd those which were reissues
“ or renewals, nnd extensions. The entire inventions
“ and all alterations and improvements, ami ull patents
“ relating thereto, whensoever issued, to the extent of the
“ territory specified, aro within the scope of tho terms
“ employed ; no other construction will satisfy them.
“ Upon the fullest consideration, we Iiavo no doubt such
“ was tlie meaning and intent of tho parties.”

Tho language employed in tho assignment in tlie
above case and tlie one now under consideration is
identical in signification.

In tho former it is: “ All my right, title, nnd interest
which I have in snid inventions, * * * and alsp.aH
right, title, nnd interest which may bo secured to me for
alterations aud improvements iu tlie same from tiino to

but it is claimed that Edison assigned to himself mul
Prescott. ■ Snell an assignment is a fraud upon tlio low. .
A man cannot assign to himself. ' Any practice that
recognizes such an assignment is pernicious and should
ho abolished. Malus usus abolcndus cat.

The patent should be issued to Edison nlono.

The respective claimants will thereby bo compelled to
contest and establish their rights in the courts, whore it
is evident the case will eventually go, no matter to whom
the patent is issued.

Respectfully submitted,

SMITH & REDINGTON,

Of Counsel.

STATEMENT

Of George Harrington of his relation with
Thomas A. Edison, and his improvements
in Fast Telegraphy.

Represents:— That prompted by the public agitation in
the United States for cheap telegraphy, and the action in
Congress m connection therewith, Mr. Harrington during
nil .official residence in Switzerland for several years ex¬
amined the conditions of European Telegraphy, and its
management under government control
„ return to the United States, in the latter

part ot 18 ,.l, he continued Ins investigations of telegraph
nffuirs, with a view of ascertaining whether it were possible
to meet the demand for cheap telegraphy, and to test the
.lech,,,,. ions ot the oflieers of the Western Union Company,
nnd ot telegraphers generally, that any further material
reductions in the tariff ot charges, would entail large or
serious atiiiiin! losses upon those operating the telegraph •
ami, if such declarations were founded upon fact, whether
there were any means for cheapening the cost of telegraphy,
so as to comply with a demand that was becoming universal
throughout the country.

THE INVESTIGATION DISCLOSED.

First. That all the railways, and the principal highways
and oven many by-ways of the country were lined with tele¬
graph poles, upon which wore placed from ono to fifty

Second. — That these telegraph lines ami equipment,
represented a stock ami bond capital of about sixty millions
of dollars.

Third. — That with every material increase of business,
there bad been, and must continue to bo, a corresponding
demand for nioro capital, for additional lines ami Wires,
carrying with it a corresponding increase of expenses.

Fourth. — That notwithstanding the immense number of
lines and wires, they wero unequal at times for the business
offering.

Fifth. — That the business of the Western Union Com¬
pany, in 18GG-7, was 5,800,000 messages; and in 1873-4,
was 14,500,000 messages, thus proving their business to
liuvo nearly doubled every five years. If we add tlio
business of the competing companies, all of which have
sprung into existence since 18GG, the year when the Morse
patents beenme public property, the telegraph business has
doubled every five years.

Sixth. — That, there were several competing companies,
sectional in their character, while the lines of the Western
Union Company extended to all parts.of the country, over
which wns done about 90 per cent, of tlio whole busi-

Seventh. — ll.nt these competing companies hud lurgely
reduced tlio price for telegraphing, and forced upon the
Western Union Company, similar reductions.

Eighth. — That neither the Western Union Company, nor
the competing companies, for many years bonefitted their
stockholders by the payment of dividends ; and the Presi¬
dent of the Western Union. Company, declared to the com¬
mittee of Congress, that most of such companies were ope¬
rating at an annual cash loss.

Ninth. — That the necessity, ns shown by tlio policy of the
Western Union Company, of removing competitions by
buying up competing liuus, indicated inherent weakness in
that institution.

T'hus far Mi;. Harrington’s investigations led to the con¬
clusion, that cheaper telegraphy was. not within the reach
ol the people.

Tlio next subject that engaged his attention, wns the
methods of telegraphing, and the character, capncity and
cost of operating the telegraph system in practical uso.

With the single exception or a printing system in limited
use by the Western Union Company, and that, as wns
understood mainly m compliance with an unexpired con¬
tract, the Morse system was the only practical system in
the United States.

This system, until 18GG monopolized by patents, wns
amply sufficient for the needs of the tolegraph up to that
dutc, the volume of business being restricted to the wants
of a comparatively limited class, by reason of the high
charges cxuctcd.

_ With the advent of competition, anil a concurrent reduc¬
tion in tariffs, the telegraph business rapidly increased,
causing us rapid an increase in lines, wires and offices, the
only equipment of which wns Morsu instruments.

The Western Union Company were opposed to any, and
all new systems or improvements in tlio method of tele¬
graphing, tliut would involve a new equipment of their
lines, they alleging the great outlay that would bo conse¬
quent thereon, as the cause of their opposition.

With the Morse system there is an average for all the
AVestern Union wires, of not more tlinn ten words per
minute. On the lines between principal cities, from fifteen

to twenty words per minute. (We speak of daily averages.)
These number of words do not employ oue-thirlicth the

capacity oi any wire, notwithstanding which, if the current
business exceeds materially twonty words per minute, another
wiro with equipment, and its corps of operators must be
provided ; and every now wiro entails a costly annual main¬
tenance, which for the year 1873-1, wns officially reported
by the Western Union Company, to have averaged $8.G6
per mile of wiro, aggregating about $1,500,000 per annum,
thus showing maintenance to bo one of the important ele¬
ments in the cost of operating the telegraph.

Mr. Harrington soon satisfied himself that under existing
conditions, the limits of capital investment in telegraph en¬
terprises had been nearly roaohed, and that money for more

lings anil wires could only lie obtained, by existing or new
companies nt great sacrifices.

Under tbeso circumstances, there was but ono of two
courses to bo pursued. Either to crush out competition, nnd
as a monopoly increase the tariffs, so ns to check the expan¬
sion of the business, or to obtain some faster system than the
Morse system, so as to utilize the unused capacity of existing
wires, and thus remnvo the necessity for additions thereto,
anil with it the demand for additional ciipitnl.

Tho Western Union Company pursued the policy first
indicated.

Mr. Orton is justified in his assertions. The Morse sys¬
tem is too slow for tho present day. Its limited capacity
demands too much capital to sustain it, and the immense
number of wires it requires nnd will require for tho present,
and prospective business of tho country, involves such an
annual aggregate outlay for their maintenance as not only
to render cheap telegraphy an impossibility, but that even n
Blight reduction in the tariffs of charges' would operate a
constant and annual loss, and practically destroy the market
value of the property.

Mr. Harrington determined, if in his power, to so improve
the methods of telegraphy by such new devices, or new and
faster systems as should supersede all present necessity for
moro capital, and not only arrest the constantly increasing
cost of operating nnd maintenance inherent to the Morse
system, but il possible, so to reduce current expenses ns
compared with the amount of business transacted, as should
place cheap telegraphy within reach of the people, and at
the Bnme time yield satisfactory returns for the capital in¬
vested.

Not being himself an inventor, this undertaking rendered
it. necessary for him to seek tho highest inventive capacity
equal to tho ends to bo uttuiuod.

Mr. George Little, a well known electrician, claimed to
have made great improvements in . telegraphy, and to have
nvonted a lust system, and Mr. Harrington secured his

inventions and his exclusive services in continuing nnd per
fccting them.

Mr. Thomas A. Edison, of Newark, hnd also mado valua
hlo improvements, and was otherwise represented ns at
inventor of largo inventive resources, and especially convor
snnt with electricity and its application to telegraphy, bu
without the means to meet the expenditures for experiment!
and tests that new inventions demand. Harrington wm
willing to combine his cash capital with Edison’s inventivi
brains, and Edison consented. They entered into a co-part
nership on the 1st of October, 1870, for a period of fivi
years, under the name and stylo of "The American Tele
graph Works," with its factory at Newark.

By his contract with Mr. Harrington, Mr. Littl'o was ti
devote bis whole time to tho development of his fust system,
which he denominated an "Automatic System,” and which
he guaranteed should be a practical success, nnd there wai
no renson to doubt his ability to fulfil his pledgo.

Mr. Edison hnd invented a fast system which he styled c
Duplex system, and hnd illustrated his invention in tlit
columns of the “ Telegrapher.”

Mr. Little was relied upon nnd engaged to perfect the
Automatic system to which his mind hud been devoted for
several years. But it was not yet perfected, nnd Harrington
declined to rely upon improvements solely or even mainly in
that one direction.

Edisoii’s.Duplex invention indicnteil a current of thought
in an .altogether different channel, nnd he pledged himself to
a fust system without specially indicating what the features
were to bo. Mr. Harrington well knowing nnd fearing the
hesitation from motives of delicacy of one inventor interfer¬
ing with, or thrusting himself into tho inventions of another
so framed his contract of October 1st, 1870, ns to cover all
of Edison’s inventions with the exceptions specifically set
forth, and so worded his assignment and power of attorney
as to causo Edison’s general nssistanco, not only to invent
and improve an original fast system of his own, but if
necessnry, and within his power, anil desired by Harrington
to assist in the developments and improvement of tho Little

Automatic system already under the control of Harrington,
ns also of any other fast system, Automatic, or otherwise,
not tile invention of Edison of which Harrington should get
possession;

Articles of co-partnership were accordingly entered into
between Harrington uud Edison, which provided :

Suction- 1. That said parties will he partners as Inventors
and manufacturers of ‘‘all and whatsoever may be required
by the various systems of telegraphy, * * the said parties
to be interested ns owners in ull original inventions and im¬
provements invented, purchased, or obtained by them, or
either of ‘them in the proportions ns hereinafter set forth.”

Sec. 4. ‘‘The party of the first part (Edison,) shall furnish
the sum of $3,000 in the manner set forth, and the party of
the second part shall furnish tho sum of six thousand dollurs

Sec. 6. “ The party of the first part shall give his whole
time and attention, talents and inventive powers to the in¬
terests and business of the firm, and shall admit no other
parties to any direct or indirect interests in, or to any inven¬
tions or improvements made or to be made by him except
such as hereinafter set forth, but all such shall enure and
belong to tho parties of the first and second part ns above
sot forth, in the proportions sot forth in section sixth of this
indenture.” (The exceptions referred to, were gold and
stock reporting inventions.)

Sec. G. Sets forth the proportionate interests as one-third
to Edison, and two-thirds to Harrington.

Seo. 8. Sets forth that, “ in all that relates to the finan¬
cial affuirs of the firm, and business and the disposition of
the products of the fuctory * * shall bo performed or up-
proved, controlled uml directed at his option by tho party
of the second part," (Harrington.)

The active operations of tho firm wore forthwith com¬
menced, and thereafter pushed witli great vigor— a factory
having been fitted and furnished with, costly machinery^

prior to the end of October or within thirty days from the
date of co-partnership, tho main object of which wns to
.experiment, make, test and perfect new inventions' and im¬
provements of various kinds in connections with “ the various
system of telegraphy.”

During the six months succeeding the date of co¬
partnership, Harrington advanced more than thirty thou¬
sand dollars in cash, which onnbled Edison to mnko and
perfect various telegraph inventions nnd improvements ;■ and
many more and much larger expenditures worn in contem¬
plation.

In order to- secure tho capital thus- invested', and'
expended together with the continued1, and' grenter advances'
thereafter to be made, and tho rights of Harrington in con¬
nection therewith, the- said Edison in good lhith and in
pursuance of his agreement ns set forth in tho articles of co¬
partnership, duly executed an instrument in writing, which-
referred to, and set forth and recited certain provisions of
suid contract or articles of co-partnership, nnd ' thereupon
reciting that the said- Harrington lmd faithfully complied
with all his stipulations and promises,' did then and- therein-
assign and set over- to said Harrington two-thirds interest
anil ownership of nil his (Edison’s,) inventions, made nnd to
be lntide, and declared that tho patents should issue to
“said Harrington and myself (‘Edison,’) in the propor¬
tionate interests of two-tliirds to said Harrington and- one--
third to myself (‘Edison,’) tho whole to bo under tho sole
control of said Harrington.” And he furthermore then nnd
therein constituted and appointed tho said Hiirrington his-
only attorney' irrevocable; with power to- subsitutc, to sell,
assign, transfer and: convoy his— Edison’s— said' one-third1
interest in conjunction with Hnrrington’s-two-thirds in such-
manner, and to such cxtent.ns ho, Hurrington, might think-
proper-for their mutual benefit,.

In tho current opcrntionB-ofthe co-pnrtnership nnd: the-
continuity- of’ inventions, that is to- say, early in 1874
Edison iuvented a fast system of telegraphy, by menus of
which- four times tho business- can- bo done-over- ono wiro,
than can be done by the Morse system. . -■ . . .

Stearns, looking to the same end ns Harrington, via:
greater utilization of wires, invented a fast system by which
tlie work of two wires could bo done upon one, thereby
effecting as claimed an economy of fifty por cent. This
he denominated the “Duplex System."

Wlieatstouo of England invented a fast system which is
equal to from four to six Morse wires for short distances.
This is operated by machinery ns is Little’s, and is known
ns Wheatstone's or the English fast system.

Edison's invention by permitting four times the amount
. of business to bo transacted on one wire on long nnd short
distances, than can bo done by the Morse system, effects a
saving in wires of seventy fivo per cent, and, will permit
the volume of business to increase four fold before there
will be an occasion for more capital, if existing wires are
used or if new linos nnd wires are erected, but about one-
fourth the capital will suffice. This fast system lie dis¬
tinguished by the name of “ The Quadruplcx System.”

We hold therefore that these Duplex nnd Qundruplex in¬
ventions are included directly within the terms of the nssign-
ment and power of attorney to Harrington from Edison,
even though it ho interpreted alone nnd without reference to
the contract before alluded to. This assignment of 1871,
refers principally, to quote from it, to “ the Little or other
system of automatic, or fast system of telegraphy.”

A review of the circumstances under which it was made,
and the objects in view in making it, will aid in.fairly con¬
struing it; nnd these arc matters allowed to be introduced
m construing such documents. When it was made, Mr.
Harrington wns endeavoring to .find the road to cheap nnd
economical telegraphy. Hot, only did lie incur, heavy pecu¬
niary obligations in obtaining nnd perfecting inventions, but
in addition to . the establishment of a , complete factory, he
obtained control of an independent telegraph lino, of one
wire extending from Now York to Washington, on, and
arcade hBC°Uld *** inventions

iv of the great facilities possessed liy the Western
| Mnion Telegraph Company nnd its practical monopoly of
telegraph business, there wns but one way possible to secure
the capital fora rival company, and obtain n share of the
business ; this was by adopting or devising such arrange¬
ments ns would enable a rival to offer to do the work at lower
rates ; to offer “ the most telegrnphing for the least money."
But no such advantage could bo offered if the ordinary
Morse system was adhered to nnd used. The capacity of
i any single wire used with such system wns well known, had
; been accurately determi ned and the rates based on such data.
In nn editorial, the “Journal of the Telegraph” of January
15th, 1875, (this Journal is published by and is the official
organ of the Western Union, nnd under the charge of Mr.
Prescott, the Electrician of the Western Union Company,)
snys, “the old system, ( i . e. ordinary Morse,) of telegraphy,
allowed a single Morse wire in n lively circuit to average per
i hour about forty messages of twenty words ench.” Hence
| if rates were to be reduced, a necessity on the part of Mr.

| Harrington, it could only bo done by increasing the capncity
; of the “single Morse wire," so that many times the “forty
i messages" above referred to, could be sent thereon in ono
hour.

To accomplish this wns the object of the Harrington and
Edison contract. Any such increase of capncity was called
“ fastness," and any system so increasing the capncity was
called “fast." This term “fast” had application to capacity
only, to the number of messages transmitted over a given
wire in a given time, taking the old system as the standard ;
for by no means could tho speed of the electrical impulses be
increased, but more of them could bo sent ovor the wire in a
given time.

i ■ When this assignment wns mado, Harrington controlled
Little’s so called “Automatic system," ono of the “ fast
systems." This system Mr. Harrington was experimenting
with under tho immediate direction of Mr. Little. But
there wero other systems by which tho snmo result (increase
of capacity) could bo, in a measure, obtained.

Mr. Ellison had' already investigated tlie Duplex — hail in
18G8 invented a now form thereof, which he published with
diagrams in tho “The Telegrapher” of that year. So thoro
i was milled thoreto, as covering these other systonispind
\ having in view the result aimed at, tho words “or fast sys-
'tems of telegraphy.”

That “fast systems" includes all systems, plans or
methods for increasing tho capacity of the wire, lius never
boon soriously denied, unless personal interests demanded it.
In fnct, when such interests have been lost sight of, this
definition of “fast" has been given by nil electricians and
telegraphers : even by Mr. Prescott, who in this case con¬
tests it, anil by Mr. Pope. These two gentlemen control tho
Electricnl and Telegraph Journuls of this country— Mr.
Prescott controlling, as Eleetricinn of the Western Union
Company, its organ “Tho Journal of the Telegraph,” and
Mr. Popo controlling “The Telegrapher,” generally recog¬
nised as an independent Journnl.

In the Western Union “Journal" for September 15th,
1874, is an editorial commencing as follows :

"Past Systems of Telegraphy."

“ 0llr present issue contains a pnper on Automatic Tele¬
graphy, by George 13. Prescott, copied from the ‘Scientific
American ’ of November oth, 1870, and an article on multi¬
ple .transmission from ‘Sabine’s Electric Telegraph,’ 1809,
giving an account of the various attempts made in Europe to
produce a practical system for tho transmission of two mes¬
sages in one direction, on one wire, at the same time.”

. “ltw '‘general reference to Mr. Prescott’s descrip¬
tions of the “Automatic,” and of the Multiplex systems, it
goes on ns follows, concerning the Qunilruplex :

“ During the past few months Mr. Gl-orge B. Prescott and
Mr. Thomas A. Edison linvo been industriously at work
upon their new Quadruplcx Telegraph, and having finally

hwill ben "'“r-1'1 “,0 W'ly of ita laical success!
it will be at. once put, in operation between all important
places upon tli.o Westorm Union linos. As an evidence of
tho great value it will bo to tho Company in tho successful

*11

handling of its immense traffic, wo will mention that 402
messages taken at. random from tho current business of the
day, were sent ovor a single wire three hundred miles long,
and copied in a good legible hand in one hour and a half.
Four operators wore employed in sending, mid four in
receiving. The messages were of average length, anil fairly
represented the ordinary correspondence of tho lines'. The
operators were all first-class, anil worked ns fast as they
could, one of them receiving 90 messnges in an hour. They
could not, of courso, keep up this speed all day, but they
demonstrated the fact that they could do fully as much busi¬
ness on ono wire with the Quadruplcx, ns they could on four
wires with tho ordinary Morse apparatus. With a system
which can quadruple the capacity of all tho main arteries of
communication which the Company possesses, what esn stand
in the wuy of its growth and prosperity? And in view of
this fact, of what possible value are any of tho Automatic
systems which are so noisily and persistontly kept for snle
before an unappreciative public I”

Thus grouping under tho term “fnst systems,” tho vari¬
ous “Automatic,” “Multiplex,” “ Duplex ” and “Quad-
rnplex” telegraphs, and this in tho official organ of Messrs.
Orton and Prescott, whose testimony on this point we are
willing to accept. Then, as commenting on this nrticle, an
editorial appears in the Telegrapher of September 20th, and
27th, in part as follows :

“ The Edison and Prescott Organ and Fast Systems of
Telegraphy.

“Tho Inst number of the Journal of the Telegraph , venti¬
lates tho ideas of Messrs. Edison and Prescott on tho subject
of “Fnst Systems of Telegraphy,” at considerable length.

“ Wo havo not spaco to follow out tho subject, and will only
say that Mr. Prescott, in his second attack upon automatic
telegraphy, has not bettered his ense, and substitutes asser¬
tions 'which experience has disproved for nrgumont.

“But it is when tho achievements of Prescott and Edison
. came under consideration that the writer warms up to his

theme. ' The automatic inventions of Little, Wheatstone j
and others sink into insignificnnco alongside of the great . jl
' quadrupled invention/ which is hound to at onco revoln- 3

tionize telegraphy, and carry the inventors, the Western ■?!

Union Telegraph Company, and all concerned, on to glory 'm
and fortuno. When this great invention is fully developed,
all other fast systems of telegraphy must subside into insig- \
nificnuco, and disappear from the face of the earth liko the ' .V?
dow before the morning sun.” .

Including again these same systems under tlio general
heading, “ Fast Systems." ' > C

Again, in the Telegrapher of January 2nd, 1875, is an > ■?
editorial in pnrt, ns follows :

The discussion of Fast Telegraphy. $

“As will he seen from the columns of the Telegrapher, the
discussion ot the automatic, duplex and quadruplex inven-
tions und systems is exciting much interest. We arc pleased
to open the columns of the Telegrapher to this discussion, l
as nothing can more interest the telegraphic fraternity, and, Si

in fact, every person connected with telegraph interests, than |J

Jthe development ot the host telegraphic system, and that !'■«

’ which shall bo for the best interest and advantage of all !
concerned.” 5*

Classing under tho general heading “fast,” the auto- :i
matic, duplex and quadruplex.

In tho same paper, January 16, 1875, is nn editorial from >§
which tho following is nn extract : IS

“ The question ot fast telegraphy, or automatic, duplex and 4
quadruplex, durives much of its. interest and importance |

from the udvuntngc which it may atl’ord to tho competing ■

parties. It is reasonable to suppose, therefore, that neither 1 1
party will neglect any opportunity to strengthen itself in I

this respect.” I

■ I

Thcso definitions of “ fast " ns applied to telegraphy, are k
the official utterances of tho two Journals in this country, |

which are the recognized authorities on this subject of tole- I

grnpliy, and they derive their weight from the fact, that
tlioy wore written for these journals, to becomo pnrt of tho
standard and current history of telegraphy, and they were
not written under the bias of interest, either as clnimnnt or
export. They show conclusively, that tho applications
which Mr. Harrington now claims to have issued to him,
fall clearly within tho provisions of tho assignment, under
which ho claims. On this point both Mr. Harrington and
Mr. Edison are agreed. They have complied fully with all
oflico requirements. They have requested tho issue of the
patents, as per tho assignment of 1871, and no number of
assignments sinco made to Mr. Prescott or anyone olso,
should bo allowed l>y tho office to work detriment to Mr.
Harrington’s interests.

Whatever cxcuso thoro might liavo been for others,
through ignorance, etc., to attempt to deprive Mr. Har¬
rington of his rights, there was none for Mr. Prescott. Ho
know of the assignment — it was not. only of record, hut it
was also a matter of public notoriety — ho knew it included
all fast systems of telegraphy, and lie know- that these wore
fust systems. The question may bo asked, then why did not
Mr. Harrington sooner move in tho matter? Hot only was
Mr. Harrington absent at tho time, but reference to the
editorial extracts beforo given, and to bo hereinafter given,
will show that they always stated, that Mr. George B. Pres¬
cott and Mr, Tliomns A. Edison had invented certain things,
that is, Prescott and Edison were joint inventors, nnd Mr.
Harrington has evidence that tho original contract in their
cases were so prepared, This was skilfully done to mislead
Mr. Harrington— it was tho first plan to deprive him of his
logul and equitable right to theso inventions. He was to bo
led to believe that thcso things were the joint inventions of
Prescott nnd Edison, and that whatever claims ho might
have upon the inventions of Mr; Edison, ns solo inventor,
he had nono on those of Prescott and Edison as joint in¬
ventors.

As soon as ho learned from Mr. Edison, that notwith¬
standing the newspaper puffs, and the many assertions in
Mr. Prescott’s paper, that, in reality, Mr. Prescott had

invented nothing whatever therein, nnd Mr. Harrington
took steps to protect his interests.

Before concluding, it may ho well to give a few citations,
showing that all systems have been judged by their capacity
to enable in a given time, more work to be done upon a
single wire; — that “fast” referred to such capacity, and
lienee Messrs. Prescott and Pope ns Editors, classed “auto¬
matic," “multiplex," “duplex” and “quadruples" under
the general heading, “fast systems.”

“Mr. Cully, the engineer-in-ehief of the British Postal
Telegraph Department, says : That the automatic system,
as it is at present employed by the post-oflicc, in its tele¬
graphic correspondence between London nnd the principnl
cities, works at a speed of from twenty to one hundred nnd
twenty words per minute. But when the land line is in¬
creased to three hundred miles, with sixty miles of cable in
the circuit, the speed will be only from forty to eighty words
per minute.”

Here, “speed” is used as referring to capacity for busi¬
ness.

In Mr. Orton’s annual report in 1804, he lauds the quad- '
ruplex on account of increased capacity.

****** “But the past year has produced an inven¬
tion more wonderful than the duplex. Mr. Thomns A,
Edison and Mr. George B. Prescott, the electrician of the
company, have discovered processes nnd invented apparatus,
by means of which two messages cun be sent in the same
direction, and two other messages in the opposite direction,
simultaneously upon one nnd the same wire. ThiB inven¬
tion, which they hnve christened the Qundruplcx, has boon
in successful operation between our New York and Boston
offices for the last two weeks, and is satisfactorily perform¬
ing an amount of work upon one wire, quite equal to the
oapncity of four wires worked with the ordinary Morso ap¬
paratus.” *****

Extract from Journal of Telegraph, (Western Union' Organ,)
January 16, 1876.

***** <<Tlle old system of telegraphy allowed a
single Morso wire, in a lively circuit, to averngo per hour,
about forty messages, of twenty words each. A message going
one way or the other occupied the wire to the exclusion of
every other message. ***** But the value of the
quadruplex system will be readily inferred, when wo state
that there were sent and received, simultaneously over a single
wire, two hundred and thirty-three messages in one hour.
The messages sent and received, were such ns constitute the
every-day business of the Western Union offices, and, sup¬
posing them to nverngo twenty words encli, we have an
aggregate of four thousand six hundred and sixty icords over
a single wire in sixty minutes — a wonderful achievement in
telegraphy." *****

Extracts from Editorials in “The Tclgraphcr,"

* * * * «'pi,u chief advantage to bo derived from auto¬
matic telegraphy, nnd the way in which it is to bo utilized
in tiio reduction of the cost of telegraphic service, is in
increasing very largely tho capacity of telegraph lines for
the transmission of business. It has beon well said by Mr.
Orton, in his official reports to the Western Union Telegraph
Company, that tho demand for tologrnphic sorvico increases

• so rapidly that it lias become a serious problem, how this
demand was to be met without such a constant addition to
tho wires us is not only difficult to be mndo, but which
seriously diminishes tho profits to bo derived from; tho busi¬
ness. Tho duplex lias for a timo mot this domund with
that company, and they aro now striving to still further
solve tho problem with the quadruplex. It can, however, in
our opinion only bo fully solved by tho automatic system,
and this will eventually' become a leading telegraph system
in this country.” ***** November 21lh, 1814.

* * * * “It will bo noticed that Mr. Eckert vory plainly
intimates in his curd to The Tribune, that it is his expecta¬
tion to be able in his now position to give the public cheap

telegraphy; With the quadruplex and the automatic sys¬
tems, both of which nro to ho adopted and used by the
Atlantic and Pneifio Company, if necessary or advantageous,
it is expected to so greatly increase the capacity of the lines
for business as to mako feasible low rates for telegraphic
servico.” ***** January 23rd, 1875.

Mr. Granville in the “ Telegraphic Journal " of London
in an article on “ Duplex Telegraphy ” last year said.

* * * * “ A further reason for the invention not being fol-

dh It may bo well to. notice that in somo cases “ automatic’*
M °nd “ fast ” have boon UBed ns apparently synonymous, but
' f| an investigation of each case where there is such appenrance
jp will show that it is only a more appearance: that the word

■ | “ fust” is used in ouch instance by somo one interested in

some system of Automatic Telegraphy, or in some portions
thereof, which he pulls ns “the fast” system, using the
word as a glorification of his particular wares, just ns somo
of the sewing machine companies advortiso thoir machines

lowed up may be found in the fact that the traffic of those
days was easily met, and telegraph engineers were not
goaded on to investigate the difficulties attending the intro¬
duction of a system which, by enabling lines to perform
twice their previous amount of work, has virtually doubled
the efficiency of the wires in use.”

* * * * “It is reckoned equal in importance to the dis¬
covery of Stcinheil, who demonstrated that return wires
could be dispensed with by the use of enrth plates. In
resultant effects the ‘duplex’ is strikingly similar to
Stoinhoil’s discovery, since both have doubled the resources
of telegraphy — the former directly, by actually doubling the
working capacity of wires ; the latter by halving the lengths
of lines, inasmuch ns return wires were proved to bo no
longer needed.” *****

The above and tho citations previously given show three
things : ~

1st. That tho value or merit of various telegraphic sys¬
tems has been determined by a comparison of capacity with
tho ordinary Morse.

2nd. That all whose capacity was increased ovor this
standard, wero grouped authoritatively under tho general
head, “fust systems.!’

3rd. That “ fast systems ” embraces the sub-heads :

“ Automatic.”

“ Multiplex.”

“Duplex.”

“ Quadruplex."

as “ the best,” eto. In this sense Mr. Harrington himself
1ms called the Little system “ the fust ” system, using “ tho
fast” as u superlative adjective t. e. that it is tho fastest of tho
fust system, and not us u synonym for another name for a
class. • He has. used it (i. e. “ tho fast”) as one superlative
just as Mr. Orton hns used “ tho slow ” ns another superla¬
tive : ench form expressing individual views, and not per¬
taining to the formation of synonymous nouns or names.

This kind of use of tho adjective “fast” is shown in tho
following extract from an editorial in tho “ Telegrapher,”
October 30th, 1874, criticising a letter of Mr. George Little
to Mr. Orton.

* * * * “It will be seen that Mr. Little, while admitting
Mr. Orton’s assertions in regard to the chemical paper sys¬
tem of Lain, or the later one of Prof. Wheatstone, not being
covered by controlling patents, argues that his American
system now used by the Automatic Telegraph Coinpuny, is
a very different and the only really fast telegraph system,
and is completely covered by his patents." *****

Mr. Little lind written ns follows in the sumo number of
tho Telegrapher.

“You say, of ‘ fast ’ telegraphy : ‘ This is a favorite
designation given by its friends to wlint is better known as
the automatic system. Why it should bo called 1 fust ’ I
have never boon able to comprehend.’

“I will now proceed to explain to you why this system of
telegraphy is ‘fast’ and works equally well, if not bettor,
during such storms as would scorn to render other systems
unreliable, and somotimes useless.”

Jinny other extracts might bo given, nil showing this ad- !.
mitted uso of tho word “ fust ; ” but, ns before stated it will ,
bo apparent tlmt no one of them claims to define “ fast” ns <
applied to systems of telegraphy, but that they only give, |
so to speak, the dealer’s puff of his own wares — his own
opinion of his one of many systems of telegraphy having
the same object.

We think n careful consideration of theso points, estab¬
lishes conclusively the fncts that the assignments to Jlr.
Harrington, covered any and nil fast systems of telegraphy.
That those in which capacity for business is incrcnscd over X
the old Jlorso standard are “fast systems.”

That among theso fast systems are the various “ Auto- p
mntic,” “ JIultiplex," “ Duplex ” and “ Quadrcplex ” sys- g
terns. Hence, that patents on theso applications should |
issue to Jlcssrs. Harrington and Edison jointly. f

And further, in point of fact, both Jlessrs. Harrington ?
and Edison having requested the Hon. Commissioner to so
issue tho patents, and this assignment having been n matter
of record and of public notoriety for over threo years before !
tho alleged assignments to Prescott, that he, Prescott, has no
rights whatever in these applications, or lawful stnnding
before the office where they are concerned.

So far as Jlr. Prescott is concerned ns may be said, (hat
lie held himself out to the public, in a journal under his
own control, ns a joint inventor, when in fact he knew he -J
was not such joint, or any, inventor ut all. J

And furthermore, that tho President of tho Compnny of 1
which Mr. Prescott is Electrician, has so held him out to |
the public in his official report to the stockholders of tho -fj
Western Union Telegraph Company. 'J

On this point wo are justified in entering somewhat more ;|
at large. s

Jlr. Harrington, by searching investigation, made him- : |
self thoroughly acquainted with the .condition of the tele- |
graph property in tho country, as also of tho details of tho ?
methods or systems of telegraphy, their cost of operating, I

their deficiencies and defects, and what was requisite to meet
tho growing demands of tho telegraph business, stimulated
us it might be by material reductions in charges to a point
offering cheap telegraphy for tho whole people.

We hove shown that tho Jlorse system — the only system
iu general use, and for which all the telegraph offices of tho
country were fully equipped — is radically defective, in being
of limited capacity, thereby involving great waste of wire
capacity, in its great cost of operating, including annual
maintenance of lines and wires,, us compared with tho
amount of business transacted, and in its unceasing demand
lor more capital.

Wo have shown also that tho Western Union Company
were opposed to tho introduction of new systems for reasons

' And we think it clear that fust and economical systems
mid reduced charges huve become a necessity to the con¬
tinued existence of any telegraph company, and especially
to the Western Union Company, which has such a vast
amount of idle and unproductive capacity in their existing
expensive network of wires.

Equally is it a fact that Jlr. Harrington, at great cost in
time and money, bus succeeded in developing such new de¬
vices and new systems, ns will fully meet tho requirements
for cheap telegraphy, by reducing the demand for capital and
the current cost of operating to a minimum.

■ Upon nil occasions, in public and in private, tho President
of the Western Union Company, ns Harrington has been
reiieatcdly informed and believes, bus ridiculed liis inven¬
tions and denied their claims of superiority us advanced by

Bccognixcd ns the superior authority in telegraph matters,
the Western Union Company, by its officers mid representa¬
tives, and especially by its President, Wm. Orton, and its
employee, Geo. B. Prescott, succeeded in misleading the
public by creating the belief that the representations of
Harrington and' his associates, Jlessrs. Little and Edison,
wore without basis in fact, and they thereby seriously, em-

bnrrassed Harrington in his pecuniary n flairs, an embarrass¬
ment which was ovorcomo only with groat difficulty.

These inisroprcsontations Anally culminatod in an official
attack upon the inventions controlled l>y Harrington, which
was contained in an open lutter from the President of the
Western Union Company to the Post Master General of the
United States, and by that Company published and spread
broadcast throughout thejand.

Then and for the Arst time was Harrington induced for¬
mally to notice the attacks made upon his property from that
authoritative source.; not by wordy denials, nor by meaning¬
less correspondence, but by an open and practical test of the
statements of Mr. Orton, intended to bo detrimental to' the
property which Harrington had obtained with so much labor
and at such great cost.

That test pas made in presence of several distinguished
gentlemen, whose integrity could not Ire impeached, and
completely refuted every assertion of Mr. Orton. This was
followed by public discussion and further developments,-
which indicated that if the Western Union Company would
maintain the supremacy which up to that time had been so
fully accorded, they must inaugurate the economics which
Mr. Harrington had demonstrated were in reach by his fast
systems, but impossible with any system controlled by that
Company.

Thus the devices and systems under the control of Mr.
Harrington were fast attaining n commanding position, not¬
withstanding the unceasing opposition of Mr. Orton.

Mr. Orton had placed upon record before the public, his
Stockholders and Board of Directors, his assertions and
statements, that there was no merit in the new devices and
systems, and ho lmd also repeatedly declared that he could
and would prevent capital from enlisting in their extension.

Wo have cited, the most prominent of his attacks upon tho
merits of these inventions and dearly proved -that they were
baseless fabrications.

. We may hero cite and prove one of hut more liusuccoss-
ful movements to frustrate the eltbrts of Mr. Harrington for.
the extension of liis systems.

" In pursuance of bis plnns, Mr. Harrington made n com-
tract with tho Pacific and Atlantic Telegraph Company
whose lines extended from New York, via Philadelphia nn(
Baltimore, to Pittsburg, Chicago, St. Paul’s, St. Louis
Cincinnati and Memphis, to New Orleans, for the introduc
tion thereon of his new systems.

As soon as Mr. Orton learned of that contract, in fulfll
meat of his threat to prevout capital from associating rvitl
Mr. Harrington, lie purchased a suflicicnt amount of tho
stock of that Company to incorporate tlioir lines in tho
Western Union system, notwithstanding neither the lines
wires or officers were required by that Company for its cur
rent business, and with the full knowledge that with tlio
Morse system they had been operated at an annual loss.

In his annual report for 1873, reiterated in thnt of 1874
in which this absorption of the PuciAc and Atlantic Com
pany was announced, Mr. Orton, after declaring that “a
the rates now established it is impossible for nny competing
company to realize proflts,” adds: “ the extension of com
peting lines has ceased, and it is not believed thnt capital
can be found wherewith to inaugurate new enterprises in
any quarter. The time is not distant, therefore, when the
Western Union Company will bo without a substantial com¬
petitor in the conduct of n business which, notwithstanding
tho enormous growth of the last seven years, is still in its
infancy."

Mr. Harrington frankly admits and declares that lie has
been greatly embarrassed and delayed, by the opposing
efforts of Mr. Orton, and that ho hns been subjected to large
losses in conscquoiico thereof, and ho is now called upon to
resist what, ho beliuves to lio a deliberate conspiracy to
doprivo him of property of great value.

- As hns been shown, the conviction wns forced upon Mr.
Ortou, that the Western Union Company wns necessitated to
control some fastor system. They owned tho “ Duplex’’ of
Stearns, tho immense advantages of which were sot forth in
tho Wcstorn Union Boport of 1873, in laudatory mid some¬
what extravagant language. . But with nil its advantages,
Mr. Orton sayB, in , that same report, “During * * tho last

three weeks our wires between the principal cities hnvo been
tnxed to their utmost capacity, nml if we had doublo the
number on some routes they would hnvo been insufficient."

In the report of 1874, Mr. Orton quietly declares tlint
tlicro nro some serious defects in their Duplex which impairs
its efficiency.

Forced to notion, and having utterly condemned American
improvements, Mr. Orton’s failing health led him to Eng¬
land, where, according to authentic information, he at
once opened negotiations for the purchase of the Wheatstone
fast system. In this ho failed.

Some timo previously Mr. Hnrrington had thrown open
his one-wire lino between Now York and Washington, and
intermediate cities, giving 20 word messnges for 25 cents,
for which the Western Union charged 70 cents.

In the appendix to liis annual report of 1873, Mr. Orton
makes an exhibit of the cost of operating the Western
Union lines by their system, showing that cost for two items
to be 32J cents for 10 word messages, and declurcs that “ no
amount of telegraph business at 24 cents a mossnge, which
it would have been possible to handle, would have yielded
sufficient money to pay salaries of operators and messengors,
and cost of maintaining lines,” adding, “ nny considerable
increase in the number of messages involves the provision
of additional wires, and, as the mileage of poles and wires
increases, the aggregate coat of maintenance increases."

Increasing the number of words in cnch message hns, of
course, the same effect as increasing tho number of messages
each with fewer words; Mr. Hnrrington had not only given
double the number of words to each messngo, but had
reduced the charge therefor from llaltimorcand Washington
to Now York about 04 per cent.

The power of tho Western Union Company, wielded by
Mr. Orton, to obstruct Mr. Harrington’s progress, potent
as it was, had its limit; It could neither repress the
energies and perseverance of Mr. Harrington nor suppress
tho merits of the inventions under his control.

On his return to tho United States, Mr. Orton ascertained
that Mr. Harrington had so far advanced his plans, as to

render probable tho extension of his systems in the imme¬
diate future, and with them reductions in tho tariff of
charges similar to those between Washington and Now
York, which Mr. Orton had declared would bo simply
ruinous.

Having failed in obtaining the Wheatstono fast system,
and failed in otherwise defeating Mr. Hnrrington, Mr.
Orton, well knowing that Mr. Hnrrington controlled tho
Edison’s invention, sought and obtained an interview with
a representative of Harrington, with a view of negotiating
for the purchase and transfer to tho Westorn Union Com¬
pany of tho Edison inventions nnd patents, and thus reliev¬
ing. his Company from threatened disaster.

The Automatic system had been perfected to a degree that
was capable of utilizing tho entire transmitting capacity of
tho wire. With it there may bo transmissions both ways at
tho same timo at a rate of speed which rondors each wire
equal to from twenty to fifty Morso wires at will of the
operator.

The calling of offices, and the Automatic signals, for the
“number of messages to bo sont,” “go-ahead,” "0. K,”
etc., arc made with Morse.

If transmission is mndo both ways at tho samo timo, and
by more than one instrument, tho Duplex or Quadruplex,
Morse must he used, giving to each transmitting instrument
its independent power of signalling.

Mr. Edison early in 1874, made the inventions for trans¬
missions automatically both ways at tho snmc time, nnd also
for the multiplex transmissions of signals. - One was an
improvement of tho Automatic systuin, nnd the other was
an improvement of tho Morse system, applicable to auto¬
matic purposes.

The systems nro distinct. Tho Morse, whother singly,
duplexed, or qundruploxed, is still the Morse system, though
that term applies only to the single transmission. The other'
inventions come within the generic name of “ fust ” und nro
denominated by tho distinguishing titles of Duplex and
Quadruplex. Of the various fast systems, Mr. Orton pro¬
nounces the Quadruplex the fastest .

■ Mr. Orton was informed that the patents for Edison's
Quadruples had not then been applied for, and ho nppears
to lmvo concluded that if he could secure those patents, and
thus multiply his capacity four-fold, he .could announce a
fast system that would supersede for the present nil necessity

. There is reason to believe that at this time ho caused a
carelul investigation ot the relations between Harrington &
Edison, and was informed tlint Mr. Edison's inventions were
all controlled by Harrington.

Hut the Quadruples hnd not been pntented, and if those
pn tents should be issued, not to Edison ns tho sole inventor,
but jointly with some other party subservient to the Western
Union Company, they might bo controlled by that Company.

The party to carry out this design wns George B. Prescott.

In tho- absence of Hurrington, Messrs. Orton and Pres¬
cott, upon -the assurances that ho had a right so to do,
induced Edison to admit Mr. Prescott, as a co-inventor, nnd
they entered into a contract to that effect, which bears dnte
the 9th July, 1874, which recites, “Whereas the saiil
Edison and Prescott are the joint inventors of certain
improvements in telegraph apparatus.”

An act on the part of Orton and Prescott so unjuBt, bo
derogatory to the well known rights of Harrington, and so
inconsistent with fact and common honesty could not bo per¬
mitted to pass unheeded, and therefore Mr. Hurrington alter
his return to New York, and ns soon as he ascertained that
tho ‘ joint inventions” ol Prescott and Edison, ns publicly
proclaimed, referred to tho Quadruples of Edison caused
Mr. Prescott to be informed that any patent issued under
such claims would bo invalidated, and Harrington further¬
more declared that if Prescott made and subscribed to the
path prescribed by patent regulations as co-inventor, ho

would proceed against him. criminally.

Subsequently, Mr. Prescott thought proper to abandon his
claim as inventor, but unknown to Harrington, mndo a new
contract bearing date the 19th August, which sets forth
Edison ns the boIo inventor, and describes Prescott os
asm nee and equal and joint owner ; .but. the official organ

of the Western Union Company, and other journals, con¬
tinued to announce Mr. Prescott ns joint inventor, and that
tho property was controlled by tho Western Union Com¬
pany.

Tho contract in question is pcculinr. It is not claimed
that Prescott paid any consideration whatever, or stipulated
to pay any for this valuabla property ; and Edison doubting
liis power in tho premises, und unwilling to do anything
that might be injurious to Harrington, caused the contract
to be so worded ns to retain in his own hands the control of
said inventions, liy stipulating in clear and unmistakeable
language, that said Prescott should have no power of dispo¬
sition in any manner whatsoever, without his written con-

It is nowhere claimed or alleged tlint Mr. Edison has ever
«» giv«u the “written consent” for. the disposition of the
property to the Western Union Company; but the same
%ff necessities that prompted Mr. Orton to take the steps, already
herein recited, to obtain possession of tlieso inventions, com¬
pelled him, when the contract was executed, to announco
or authorize to be announced in his official organ nnd else¬
where, tlint the Western Union Company controlled a now
and tho fastest system of telegraph extant — tho joint inveu-

Ition of Prsccott nnd Edison, — und subsequently embodied
tho same statement in his October, 1874, annual report to
his stockholders.

For this there wns no justification. With n purposed
vagueness, however, the Bill which tins been filed in thu
Circuit Court of the United States in New Jersey recites,
that at some indefinite time und place, in the course of some
indefinite conversation alleged to have taken place some¬
where from six to twelvo months prior to the said contract
with Prescott, Mr. Edison said lie would improve- the
“Duplex."

On tho of December, 1874, without tho knowledge
or consent of Harrington, Mr. Orion, according to Exhibit
A of tho bill, paid to Mr. Edison, the sum of five thousand
dollars on account, of certain inventions, the joint produe-

tion of Prescott aud Edison, for which Mr. Edison gnvo a
receipt, - • •

Lot us examine this receipt :

It clearly Bets forth, that the payment wm on account of
devices or telegraph apparatus, the joint invention of Gcorgo
B. Prescott and Thomas A. Edison. Either such payment
did not apply to the quadruples inventions of Edison, which
Mr. Prescott declared over his own signature, on the 19th
August previous, to have been tiie sole invention of Edison,
or it was a continuation of the deception on the part of Mr.
Orton, which is so apparent in this whole transaction.

Assuming that, the payment was on account of quadru¬
ples, as now claimed hy Orton — the money was received
hy Edison, with a qualification and a proviso, via: Provided
the terms of payment shall he satisfactorily adjusted ' be¬
tween the parties, and the said telegraph company.

Thus wo have an acknowledgment, that at tliis date, De¬
cember , 1874, tliero had been no agreement us to the
price to he paid for tlio property, and that it was left op¬
tional with the parties ou either -side,- to terminate tlio
negotiation at will.

The hill then sets forth

on the 10 th December, 1874, Messrs. Edison and
joined in a formal proposition in writing, em¬
bodying tlio terms upon which they would sell to tlio Wes¬
tern Union Company the inventions in question.

Had that proposition been accepted; had the Western
Union Company agreed to the terms or price theroin set
forth, as satisfactory to Prescott anil Edison, there might
have been, in tlio absence of prior ownership in Harrington,
anil all freedom from fraud, some grounds for asking u com¬
pulsory process to compel Edison to trausfer.

But it is not claimed, that the proposition was accepted.

On the contrary, it appears by the allegations of tlio bill,
that some five weeks after tlio receipt by Mr. Orton, of the
joint proposition referred to, that is on tlio 19th of De¬
cember, 1874, Mr. Orton made a counter proposition,- in tlie
form of an acceptance of some other alleged propositions of
Edison and Prescott, of which no copy is furnished, nor

date or signatures given, but claimed to' have been received
“ on or about Dccomber 30th.”

On tho same date, with tlio counter proposition ns above,
there appears to hnvo been paid to George B. Prescott, the
sum of five thousand dollars, on account of inventions
alleged as the joint property of Edison anil Prescott, a
transaction, having for its purpose, an indirect acknow¬
ledgment of a paper unacknowledged by Edison, and to
show in so fnr ns he, Prescott, wns ' concerned, that by the
acceptance of the substitute proposition without date or sig¬
nature, there might be some basis for clniming an agree¬
ment. At the smile time, the bill shows that trusty special
messengers were dispatched, (at midnight,) to place in
Edison’s hands, tlie missive of acceptance of the so-called
proposition.

Why this unscomly haste after permitting five weeks to
pass without action since the receipt of the cited written
proposition?'

Mr. Orton had learned that Mr. Edison lind finally repu¬
diated all connection with him and- the Western Union
Company, and pluced his inventions in the control of Mr.'
Harrington, where they rightfully belonged.' "'

Under any circumstances Mr. Orton or the Western
. Union Compnny can but ask the fulfilment of a contract!

Mr. Orton knows, and the testimony proves, the existence
of a prior contract with Mr. Harrington. Mr. Edison and
Mr. Harrington both declared the contract of October 1,

1870, and the assignment niid power of attorney of April 4,

1871, to be in full force and effect.

There is no dispute as to the scope of the contract of
October 1, 1870, nor that Mr. Harrington fulfilled all of
his undertakings and stipulations. There is no taint of
fraud connected therewith. 1

On the part of Mr. Orton and the Western Union Com¬
pany, there is neither contract nor agreement : giving to
either of those parties the shadow (if title to tlio inventions
in question.- : . . , :

The action of Mr. Orton and of- the Westorn Union Com¬
pany, undor date of January 19th, accepting some other

Second. An assignment of Edison to Harrington, dated
the 4th day of April, 1871. Recorded in the Patent Office
on the 16th day of May, 1871, Liber U 13, pnge 412,
Transfer of Patents. Appendix B.

Third. Memorandum of agreement between Thomas A.
Edison and George Prescott, being joint inventors of cer¬
tain improvements in telegraphic apparatus, dated July 9,
1874. :

. Fourth. A partnership agreement botweon Thomab A.

The questions herein submitted ariso upon the follow¬
ing documents of record :

. First. A partnership agreement between George Har¬
rington and Thomas A. Edison for carrying on business
under the name of the American Tolegrnph Works, dated
the first day of October, 1870. Recorded in the Patent
OlHco on the lltli day of January, 1875, Y. 18, p. 258.
Printed in the Appendix, marked A.

o invention set fortli in the annexed specifics- ||
I, incut to the said C. T>. having been duly
i Patent Office, in Liber — , page — . g

iorved that u reissue is to lie grunted in the |y
s the origiiml patent, except when the in- g
or the original patent was issued prior to g

it of law the eighth regulation I

o law and practice and regulations of the g
cm to require — |

ill applications for the issue of patents innst |
id, and sworn to by the inventor, whether J
isue, whether assigned or not. |

t no part of a patent can he assigned so as |
t issued to an assignee, even at the request i;

, the inventor may at any time before the i
1 withdraw his application for a patent,
it an application for a patent muy bo ubnn-
red at the plcasuro of the inventor, and this
indent of the question whether ho has as-
srest therein.

Id seem that the application for a patent,
m is placed by the law and the practice of
ely within the will and control of the inven •
he assignee of any part or of the whole can-

Snob boing tho state of the law and the practice of the
Office, lot us present tho preeiso stato of facts in this enso,
as they appear of rcoord, as seen by tho exhibits in the
appendix.-

Edison, tho inventor of certain improvements in fast or
duplex telegraphy and telegraphic machines and instru¬
ments, tiled on the 19th of August, 1874, eortain applica¬
tions for pntonts for alleged discoveries by him in his spe¬
cialty, and asked, for reasons controlling him at that time,
that the patents might bo issued to himself, jointly with
Gkoiiok Prescott, his assignee, and afterwards, to wit, on
tho 23d of January, Gkohoe Harrington, claiming to he
assignee of said inventions, filed his petition (Appendix I)
that said patont should be issued to himself and Edison
jointly ; and Edison, by his letter of tho same date, (Appen¬
dix J,) revoking his request that said patents should bo
issued to Prescoit and himself jointly, asked that patents
for his inventions might bo issued to himself and Har-
niNOTON jointly.

Afterwards a hearing wus had before said Commissioner,
who ordered that said patents, when granted, should bo
issued to Edison mid Prescott jointly, ns assignees. Ap¬
plication was then made to the Secretary of tiie Inteiuob
to suporviso the action of tho Commissioner in that behalf.
Whereupon Edison appeared by his counsel before the
Secretary and asked that said patent bo issnod to himself
alone, and not jointly to himself and Harrington, nor to
himself jointly with Prescoti'.

It further appears, by a contract dated October 1, 1870,
(Appendix A,) that Edison and Harrington had ontered
into a partnership, under the name anil stylo ot tho
“ American Telegraph Works,” to carry on tho business
jointly of manufacturing certain telegraph instruments,
(with a certain exception in the contract sot forth,) and for

' Jrfru- s

milking inventions and improvements in the transmission ar
recording of tcicgrapiiic signals, ns in said contract is s
forth ; and that said Edison, as his share of the partnership a
sots, stipulated that lie would “ give his whole time', nttentio

I talents, and inventive powers to the business and intcrc
;< of the firm, and that he would admit no other parties :
“ any interest, direct or indirect, or interest in the iinprov

II ments made or to ho made by him, except ns hcrcinuft
“ set forth,” (wliiuli exception is the invention imidu for tl
Gold and Stock Company,) and hinds himself not “ to i
" vent, under said contract, any machinery that will mi
“ tate against automatic telegraphy, or sell or convey
“ any parties whatever, without the consent' of tlio party
“ the sceoiul part, any invention or improvement that nu
“ he useful or desired in automatic telegraphy, and that f
“ any original inventions and improvements so made
“ the business he shall receive a reasonable and prop
“ compensation according to their practical value, n
“ things considered, such payment to bo nrndo in additii
“ to and irrespective of the proportionate port of the pi
“ fits of tho husiuess of the firm to which tlio party of tl
“ first part would lie otherwise entitled, with a proviso
“ determining the manner in which such reasonable coi
11 pensntion should be fixed.”

Edison made an assignment to Harrington under date
April 4, 1871, (Appendix B,) in the recitals of which, i
ferring to this contract of October 1, 1870, Edison nsshrni

ere joint inventors of certain improvements
apparatus, described ns magnetic duplex a
ing the invention moro purticnlarly descriln
which invention they arc to apply for lotto)
io United States to bo issued to them jointly
enicnt recites “ the improvements and invc
ich they are joint inventors, are all those i
r making inultiplo transmission ot magnol
r use hi telegraphy, which are described
anil specifications now in the hands of Geor,
i for the purpose of milking models of n
hereby such invention can be operated, bcu
ventions of said parties;” and reciting tl:
:s have an equal interest in said joint lette:
And said agreement further recites, -tl:
Idison has heretofore cxpoiulcd SI, 125 t
d patent fcos, tlio benefit of which ho cc
the common interest, and waives rcimbtin
hat sum, or any part of it, Prescott here
my solely and without contribution from E<
futuro expanse and cost of specifications, drn
,1s, Patent Ofticc fees, and patent solicito
s’ fees, and all other charges incident to t
of lettors-pntont for any of said inventions.”

implications Tor Icttors-patent to tho United States, ami
sticli applications were mimliereil 94 to 100, inclusive,
and arc dated August 19, 1S74, and PitKseorr is entitled
to an equal interest in tlic same, and others mentioned
1 therein.”

Then the agreement recites that the same consideration is
o ho paid to Edison by Prescott therefor ns in tho agree-
neat of July 9th, to wit, the payment hy Phkscott of future
ixponscs and costs of getting out said patents.

After these several contracts and agreements, Edison
ipplied for lettors-patent for a duplex machine, which were
it his request issued to him and Harrington jointly, being
NTo. tr.CjS t:!, November 17, 1874. (Appendix IT.)

While these several applications, from No. 94 to 100 in-
dusivc, and No. 112, for patents wore pending, the Com-
ntssioncr of Patents referred the question to Z. E.
Wii.umt, examiner in tlio Patent Ollice, to ascertain
whether these several applications lor miri.KX ash quaii-

deed ot assigiiincut ot April 4, 1871, from Edison to
Hauiiinoton hy apt words as a system of “fast tki.e-
“ ottAfiiv” or “automatic Tiit.KoitAi-uv,” and Wtt.aun re¬
ported that they wore, in Ins pidgment as an expert,
properly described, for reasons set forth in his report. (Ap¬
pendix lv.) Upon this state of facts the question arises, in
viow of the law, to whom should the patents issue.

tested in a court of equity; in
that done, and of that right tin
deprive him hy issuing the pi
Phkscott, bemuse that leaves 1
on the part of Haiiiunotox, a
able to defend himself.

On the other liaiid, if the pa
ton jointly with himself, that
lor damages on behalf of Pat
not lie able to defend himscll
issued to iiimski.f, lie admits l
have jurisdiction at once upon
ton or PitKseirrr, to decide tho
to iiiako assigiiincut of the eh
ids protection in that casu we
the two claimaiits to mterplea
judgment would determine the

This is a very valuable rigli
is a sidlicient reason for his i
made that ail interest in the pi
himself jointly with either.

Aga . in examination ol t

men Is will show that both ai
agreement for partnership with
corr, and the inventions, wlietl

L'im deed of October I, 1870— whieli is only vuluuble in
s discussion us showing witut worn tliu “ covenants
ind stipulations” which nrc referred lo in the recital* in
i Jucd from Edison to IIaiiuiniito.n of April 4, 1871 —
ows tlmt Hourly live yours before lliese putents were
limed, Edison agreed, liy bis “ coveiiuiitsuml stipulations,”
dcr soul, tlmt liu “ would give bis whole time, attention,
tulents, and inventive powers to the business mid interest
of the firm, und udinit no other purties to any direct or
indirect interest in or to any inventions or improvements
made or to be made by me, except us herumullei set
forth, but all such shall enure and belong to the parties
of the first and second part, us above set forth, in the
proportions set forth in the sixth section of this inden¬
ture, excepting inventions made exclusively for the Hold
and Stock Company, which are not to be included in this
agreement. Hut said Edison binds himself not to invent,
under said contract, any machinery that would militate
against automatic telegraphy, nor lo sell, transfer, or
convey to any party whatever, without tlie consent of the
party of the second part hereto, any invention that may

1. Thoy are made upon silflicient considerations.

2. There is nothing unlawful in the contracts.

3. Neither is tiiere any objection in public policy to th
making of such a contract.

It is not perceived why a man cannot carry on th
buxines* of invention tor the benefit of another as wol
ns any other business; certainly there is no statuto agains
it. A man having a talent for invention lias a right ti
employ, use, and sell that taluut at his pluasuru, and sud
employment is for the huuofit of the inventors who otliui
wise might not be ablu to exercise such talent, unless tho;
cun find some one to advancu the necessary uionuy fo
their support and to make the necessary experiments wliil
they are in progress.

If by, or because of any subsequent act of Edison tiles
covenants ami stipulations have been broken in their tru
intent and meaning lit the assignment of these inventions
for which patents are claimed by Edison, to Pukscott, tlioi
Edison is dearly liable in damages to Hakhinoton, and al
the more ccrtumlv it Pbksoott proves to be a purchase
for valuable consideration, without notice.

Why, then, should the Commissioner grope among the j|gg
liabilities to get ut tho fonts, wlian ho could lmvo had fwt
: evidence of the (nets ? |||j|

The Commissioner again says : “ Admitting that this deed, |»1
i. c., the deed of Enisox to IIakkikotox of April 4th, pAS
included these inventions in unmistakable terms, no jdjft
legal title in them passed thereby to Harrington. Tho\|g||
nstrnmcnt Inis the force only of an executory contract.”

He cites as authority, Gibson v. Cook, (2 Blatchford, gSt
4;) Clirtis on Patents, 4th edition, page 200, sec. 183,

Tiio case in 2d Blatchford by no menus covers the point,
d tlie citation from Curtis deals only with the point how
' any conveyance of an unpntcntcd invention gives
tice to a purchaser. Tho learned author, in summing i

" Wo aro considering a question of notico of title, anil if the \
nstrument supposed to opemto ns n notico could not in the I ' |
inturo of things give the information, can tho subsequent ■ {J
nirchuscr bo bound to look olsowhere."

How docs the citation sustain the opinion of the Com- ,
issioncr, •• admitting, then, that this deed includes tlieso
inventions in unniistakahle terms, no lcgul title then j»ag
passed thereby to Harrington f” ;3f

A legal title might well enough he passed to Hnrring-
n, of which u subsequent purchaser might not have bcon jjjp
land to take notice because of tho record of his deed; g|||
it it is difficult to seo how even that could bo true “ if til
deed included the inventions in unmistakable terms.” t'sieU1
ut tho argument of the Commissioner is, “tliut the proba- |||j
bilitioB are that those inventions were not iucludod in Hur- j|||
rington’s deed.” Why, then, will ho not hoar and “con- fjM

“ sider evidoneo” that they wore included? Ho holievos
from probabilities, that they wore not in esse at tho time o
the execution of tho deed. Why not, then, hear evidcnci
of that fact, and determine tho probabilities ?

It is true, Voltaire soys, “ that the balancing of prolia
“ bilities is the science of judges.” But lie is speaking o:
probabilities arising from evidence given to tho judges
not “ balancing probabilities ” whom tho judge decides tluii
lie will not “consider the evidoneo because iio has not tin
“ authority of tho court to consider evidence.”

On tho contrary, tho examiner, from his knowledge o
tho stato of tho art of telegraphy, determined tho tact tc
bo thnt these inventions wore aptly described by the tenm
used in the deed to Harrington of April 4th.

If the argument of the Commissioner is to bo taken tc
mean that PitEscorr became a purchaser without notice
and, therefore, the legal title vested in him by tho execu¬
tion and record of his assignment, then the question
whether lie took without notico is a question of fact. This
could be determined by the record alone, if, as tho Com
missioncr admits, “ the deed of HaiikinOtox includes those
“ inventions iu iiiimistakuble terms.” That deed being re
corded before tho purchase by Piu-snoTT, lie must take notice
from the record. If ho laid not notico by tho record, was
it not competent for Hahuinotox to prove before the Com¬
missioner, in order to maintain his prior assignment, thnt
Prescott had notice in fact, and, therefore, no legal title
passed to him ?

Tho idea of the Commissioner, however, soems to be, al¬
though not very clearly expressed in his opinion, that an
invention which is in fieri, i. e., not perfected, cannot be
assigned by deed so ns to pass a legal titlo to tho assignee
when tho invention is patented, although it is process ot
invention.

of the opinion of the learned Commissioner
lot sustained h)' any authority. On the eon-
mit that it is now well settled that an inventor
an interest in his invention before it is per-
whilc it lies in his mind, or even before the
s come to- him.

itter to be discovered may bo conveyed before
cd is older tbnn the knowledge of tbc conti¬
nued granted to Columbus a portion of wlinl
novel- in the new world before be sailed from
t a “discovery in tbc usol'nl nrts,” ns the Con
ms it, is assignable before it is perfected, 01

i of Nesmith cl at. v. Calvert, (1st Wnodbur
-l,) tlie court held that, where an inventor hn<
lachinc mid contemplated that be might niaki
ivements upon his invention, mid, for a valunbli
i, made a deed conveying those improvement
> lie made and patented, when patented i
ity would compel him to make the conveyance
title had passed to the assignee. But it inn;
hat this was a decree in equity by tho lenrnci
wllmry v. Minot, mid thereby it may have bcei
ly the equitable title passed. But in the cas<
v. Trimble, (10 Wallace, 3G7,) before cited
suit at law in which the loirnl title was broueli

paionis lonnci it to bo, to wit, that tho duplex systems anti
quadruple x systems wore indeed the fast systems of tole-
gmpliy.

Besides, Edison liinl covenanted with Hariiinoton to im-
|irove certain telegraphic systems in liis deed of April 4,
IS71, and had followed up his covenant by patenting an im¬
provement on the duplex system, and taking out tiio patent
jointly in his own and Harrington’s name, in accordance

By the printing and laying before tiio Coinmis-

lioner their very elaborate 1
vliicli they collect citations 1

f of thirteen pagos, i
n telegraph literature n

ating tho automatic or fast system, and they disclose the
mrpose for which those citations were made, in these
vords: “ The general literature of the art thus discloses
‘ the difference between the automatic ami duplex sys-
1 terns.” Tlmt is, those citations of tiio literature of tho
irt were cvidcnco that tho automatic or fast system was
he duplex system. But what effect do these citations
rom the newspapers have upon tiio lottcrs-patcnt, No.
56,843, already issued to Edison and Harrington jointly
inder this deed ? Why cite evidence dehors the record 2
Nil not the Commissioner decide that lie would “consider
""thing but tho record 2” It is not possible that lie meant
y this decision to make this exception; oxcept extracts
■om the TELEGRAPHER, tho newspaper organ of tiio
Western Union Telegraph Company.

Tho title to Hariiinoton wot
ad employed from October I

should bo in part Harrington's property upon paying
Edison a reasonable additional compensation therefor.
Edison acceded to these terms, ns the subsequent deed of
April 4, 1871, shows. By this Harrinoton took nil as-
signment of all that Edison hud discovered or should dis¬
cover. In 1873 caveats had been tiled for some of these
inventions. Ayenrufter a patent laid been taken out upon
another — /. e., for duplex telegraph, and assigned to IIar- i
binoton; prior to that, to wit, on tho 19th day of August
of tho same yonr, Edison had made application for still :
others.

The examiner of the Patent Oflico decides tlint all of
these inventions are within tho terms of Hariiinoton’s
deed, which lmd been in proper time duly recorded.

Assuming these to bo the facts only ns they nppcnr
by the record, which alone guided the decisions of tho Com¬
missioner, would not tho legal title to these several inven¬
tions at once, upon the issuing of the patents therefor, have
passed to Harrinoton ? It is submitted tlmt no tribunal
lould come to any other conclusion.

Is tins state of facts affected at all because subsequently
o these inventions — in fact after the caveats for some of
belli hail been filed — (see list of caveats in appendix) — j
‘ conveyance of a part intorcst liv Edison to Prescott in j
1 Buck inventions was made?”

This would depend —

First. Upon the questions whether tlint deed was made
ipon an adequate and conscionnblc consideration, and had
icon duly executed, and not abrogated or nnnnllod. Bat
ihese are questions of fact.

Second. Upon tho question whether Prescott had con-.
i tractive legal notice because of the record of the assign¬
ments to Harrington in tho Patent Office, or actual notice
hereof, and of Harrington’s interest therein.

: Referring to tho record only, ho had

legal effect of record of tiie nssignmei
and, in the language of the Commission
“ IIarrinoton’s deed includes those ii
“ tnknhlc terms,” then Prescott lmd eo
tiuc of Harrington's claims, and was ;
Whether he lmd actual notice is n qn
shown by evidence. In either case Pr
in these inventions ns against Harrinot
whether Prescott had a legal title ns a
(mid he might well Iinve one ns again
such n one ns against Harrington,) do
the evidence of tho facts which the C
mines lie “cannot consider.”

It will be useful, upon determining t
under all these circumstances, to cons
tion of Prescott in this affair, as nppen
With tho record before him of all 1
whatever they might be, in this class <
cott makes a contract on the 9th of July
to be a joint inventor of all these impr
ho is to have one-half thereof by payin:
and solicitors’ fees for procuring the pal
dcr. But on the 19th of August follow
his claims as joint inventor to any of
claimed to be tho purclmsor of onc-lml
them, in consideration of paying only th
solicitors’ fees for taking out tho pntcnl
And Prescott was curofnl to tic up I
that the real inventor, Edison, could hi
without his consent, by tho provisions wii
considered, that neither was to “ sell, n
“ dispose of the wliolo or any part of his
“ volitions or lotters-patent therefor, or

ut tlio written consent thereto first obtained of tho other
arty.” Again : “ That neither of said parties will him-
elf lnanufactnre, nso, or sell, nor grant license, nor the
iglit in any way, to any other party to inaimlaetnre. use,
r sell any of said inventions or any improvements
hereof, or any machines embodying 01 at Lit lc < mtaminj
ny of said improvements or inventions described by any
f said lettors-patent, without tho written consent first
htained of tho other party.” Again : “ No sale of nny
f Said inventions, and no liccnso or right to make or use
io same in any way, shall ho made or given oxcept ut a
rice to which botii parties agree in writing, and all net
rofits shall ho equally divided between tho parties
crcto.” (Appendix (J.)

t will lie observed that substantially these same provis-
s were in tho previous contract of July 0, wherein
hscott is recited to tic the joint inventor of all these im-
vomonts ; with how much of truth will appear from tho
t that within forty days afterward ho relinquished all
ims to 1)0 such joint inventor in his deed of August 9.
did Pkkscott know of tho great value of these inveii-
is, of which lie was not the joint inventor ut the time ho
lined to lie tlit joint inventor thereof, to wit, on the 9th
fitly, 187-1- ? Did lie know of (lie vast value of all these
u-ovoments August 9, the time lie ulnims to have bought
i-hnlf of all of them and tho profits thereof of Edison,
I tied him up by covenants so that ho could neither
nul'acture, sell, use, or permit others to manufacture,
I, or use tho invention, when he agreed to pay for tho one-
I ot such undivided interest therein only tho necessary
cut Ollico fees and solicitors’ fees to tnko out the
unts ? (Appendix D.)

Vs tho loarncd counsel in their brief have put before tho
minissionor citations from newspapers ns ovidcnco of

now Jidison’s assignment to JIakiiinoton ought to bo con¬
strued, and tho inferences to ho drawn therefrom, and tho
probabilities arising out of it, they will permit me to make a
Binglo quotation from a newspaper for tho purpose of showing
knowledge of tho utter uncouscionnhlcncss of this protcndc|l
bargain nnd deed ot assignment to Prescott, wherein lip
claimed — ns his subsequent deed of 19th August sIiowb
falsely — to bo tho joint inventor in those wonderful im¬
provements in the system of tolograpliy.

It will be observed that tho deed of the 9th of July was
not recorded until afturwurds, so that on tho night of that
day these inventions had not become known to tho world.
Now, tho New York Daily Times is a morning paper, and
on tho morning of the 10th tho articlo- appeared, which is
printed in the Appendix, marked L, in which it is cluinicd :

till i

niii

from tlio TELEGRAPHER newspaper to prove tlio
cnees and probabilities to ho drawn from Hnrrin
deed of assignment ; and, if so, it certainly shows t
tent to ■which the art of robbing an inventor of the
of bis skill for the benefit of an overgrown corpe
lias been carried in modern times.

If, under these circumstances, in view of tlio fnc
penring on the record, the Secretary deems it his d
sign n patent to carry out this, which wo have now n
to say is an overreaching bargain on the part of Pm
so that he may enjoy its fruits and deprive Edison tl
then the Western Union Telegraph will indeed “co:
tlio patent for this discovory, which is the “ solution
“ the future difficulties in telegraphic science,” i
“ not inferior” to those of Morso and of Stearns.

All which is respectfully submitted.

BENJ. E. BUTLER,

GEOKGE B. I

Witnesses :

Hahold Seiihell,
Lemuel W. Seiuiell.

stop, luid ono no
only to bo fluid oi

IN TUB MATTER

Oh)

HARRINGTON and EDISON

PRESCOTT.

BEFORE THE SECRETARY OF THE INTERIOR.

Briof in bohalf of Gcorgo Hurrington, in roply to tlio Briefs
• of Counsol for Goorgo Prescott.

II argument for Mr. Prescott, filed in pursuance of
tlic decision of the Secretary to allow “ arguments on the
merits of the case,” is almost entirely a plea that the Sec¬
retary will not consider the merits of the case at all.

The Secretary has decided that he has juristliclion, and
will exercise it. Yet it is still contended that he “ is
without jurisdiction to consider whether the Commis¬
sioner has erred judicially,” aud that to look beyond the
question whether the Commissioner has acted without
fraud or collusion, “would he violently subversive of the
true order of public business." In order to persuade the
Secretary not to interfere, the counsel for Mr. Trescott
assert that for errors, such as arc alleged, a peculiar and
most efficacious remedy by bill in equity is given by sec¬
tion 4915 Revised Statutes.

This is by uo means certain. Tito remedy provided in
that section seems to bo ouly for an inventor, us the court

may only adjudge tlio applicant entitled “to rccoivo a
patent/or his invention," and as Mr. Harrington is not tlio
inventor in this case, but an assignee merely, the section
does not appear to benefit him.

Tins view is strengthened by tlio construction of that
section which gives a right of appeal from tho decision
oi the Commissioner to the Supromo Court of tho Dis-
trict of Columbia (now Rovised Statutes, Sec. 4911).

\ In II lately v. Usher, 4 &shcr 84S, it was decided that
N10 relusul of the Commissioner to grant a patent to an
assignee does not form the subject of mi appeal, which
tins reference to tho contents of a patent, and not to a
controversy us to who owns it.

If tuis ns so, then, instead of withholding hia exami¬
nation into the rights of tho parties iu the present case,
there lb the strongest reason why the Secretary should
c ose y scrutinize tho merits, inasmuch as ucithcr tho
appeal nor the equitable remedy given to inventors, is
allowed upon a question of ownership

All through the arguments for Mr. Prescott, there is
an appeal not to look into the merits, the equities of tho case,
a us so before the Commissioner. There, in substnuco,
e ni guinea t was — and the Commissioner adopted 1 it —
lou must disregard tho “equities,’’ ignore tho assign-
men to Harrington, although prior iu date to tho
no o I rcscott, and for a valuable consideration ; al¬
though Prescott had full notice of it by the record,
which exhibits no consideration on his part ; the Commis-
sioner can only decide who has the legal title, leaving it
a Court of Equity to enforce tho assignment to Har-
mgon, which was held to, be merely “ an executory con-
tiact and although permitted by the law (Revised
4’8?5)' “Ud tUe ruloa P«ent Office

( ole 118), you shall not even concede to the Commis¬

sioner the right to consider ovidonce, ontsido tho record,
as to outstanding equities.

Wliou counsel admit that tho Secretary has a right to
interfere, to prevont fraud — in fact that it would bo his
duty to do so — tlioy surrender this part of their easo.
That is simply tho powor to do equity.

The grant of a patent is not a more ministerial act, but
one involving the exercise of judgment and discretion. (See
Commissioner of Patents v. Whitley, 4 Wallace, 538, where
a mandnmus wns refused upon these grounds.) This ex¬
ercise of judgmont and discretion, involves the doing of
justice and equity.

Why should the Secretary, or tlio Commissioner who
issues patents undor his direction, bo asked to disregard
the equities of tho case ?

Tho commissioner bnsos his decision against Harring¬
ton upon tho presumption, that the inventions claimed
woro not in esse on tho 4t.h of April, 1871, when Edison
nssigued to Harrington. '

This, to use liis own language, is “ in the absence of
positive evidence on this point," and beeauso “ it is incredi¬
ble under tho circumstances, that an inventor like Edison
should allow such valuable improvements to lio tlireo or
fonryenrs after completion, without applying for patents.
Tho inferences of law, and fact which I10 makes, it is re¬
spectfully assorted, are nliko orroneous.

An invention does not date morely from the time of
its “ completion” or perfection.

Morsodidnotlilo his caveat until 1887, yet tho Supromo
Court in awarding to him priority of invention (Morse
v. O’Reilly, 15 Uownrd, 109), said, that in 1882 there is
reasonable ground for behoving that tho process and
means, the combination, powors and machinery were
arranged in his mind, .and developed so far, that he wns

confident of ultimate success, nml that lie pursued hii
investigations with unremitting energy nml industry.

in Oo« v. Massachusetts Firearm* Co., 1 Fisher, 10S-
tlm’l' tWlv n 1,1 v1, t,mt “tl10 ,,nt0 of tl,c '''volition ii
! H ° A‘° lllsuovory o1' the principle involved, am
ho attempt o embody that in some machine, no Ithedal
of the perfecting of the instrument ”

% reference to the “ Telegrapher” (a paper mud
T"1 f°r Mr‘ 1>raeott). of Saturday, Arm,
Donmv m ’ n tlosol,,l’tio,> ha fonml oi’ “Edison’:
JJourni in vn juttek,’ with full specification and din
,iam, commencing as follows:

• ^ .l.no,lns tl,'s ingenious armngonicnt, two com

at Tims u'8 Umy 1,0 tril"smitted in opposite dikeotions

it from l/‘ C tystem’ for tho purpose of distinguishing

invention i„ n • ° 10 commcncomont of Ellison’s

It til 3 "!° °f (l°v°loPi„g telegraphy.
OhomSl'lt,r"’ t ,aVE,lis0"’ lli9 Aent for Duplex
1874 2, S''ai,l‘f’ No’ 15C.8M, dated Hovombor 17th,

torios, resist^ tm. "m0 “* -'P'“y >»“•

manner tlmt tl ... ' co"»eetioiis, arranged in such a
be neutralized '° ° t°0t °* t*‘° tnuismitting hi

VTaua^0n hC rCC“Vina ot tl

(Soo page 40, Brief of

that the comm'iMinI,D DEFOaB ’'IM’ tho Secretary will soo
vontions in eo,,trovomt\ttre2t !22i2Rt1t^t|tl\0

of tho assignment to Harrington. It is not claimed that
they were absolutely perfected then, nor is it necessary to
do so. They were in a state much advanced beyond tho
inchoate, to which, ns it has been shown, an assignment
will attach on thoir perfection. Hot only was tho “ prin¬
ciple discovered,” but tho process, combination, powers and
means arranged in a working machine, in courso of tho
improvements and perfection since attained, embodying
the essential features of the invention.

II 'bat then remains of Prescott’s claim ?

Equities he has none. Tho commissioner based tho
decision in his favor on a supposed state of facts, in re¬
gard to which it appears he was entirely in orror. Even
if tho inventions were inchoate and experimental, boing
perfected before the Prescott assignment, tho deoil to
Harrington took oifcct upon and attached to them as
soon as they came into complete existence. Tho eases hereto¬
fore cited fully sustain this position, and there are numer¬
ous others.

The oxi.y plea left to tho counsel for Prescott is the
one urged so strenuously, that tho only inventions as¬
signed by Edison to Harrington wore such ns related to
“fast telegraphy ,” and that tho “ duplox ” and “ quadru¬
ples ” w’ore uot such inventions.

Yet it is claimed (sco p. 20, Brief for Edison) that tlioy
“ will quadruple tho usefulness of tho 175,000 miles of
wire owned by tho Western Union Tolograph Company,"
(Hr. Prescott’s) who will in consoquonco of tho alleged
ownership of thorn, “ need to oroct but 2,000 miles of
wire noxt year” instead of 20,000.

In referring to Steam’s Duplox in 1872 (sec Brief for
Prescott, p. 24), “ Tho Journal of tho Tolograph ” says
“ though it docs uot quickou tho process of transmission,
it practically does so, by doubling the capacity of every wire.”

It has already boon shown that tho partnership botwoon

,1,UWM m,u unrnngcon, covered mvontionB of “nil and
whatsoever may be required Inj the various systems of
Telegraphy."

It in also shown that ovon iindar the Tlarrington
assignment of 1871, Edison was not only to develop into
'•so, by practical instruments, the Littlo or other system
ol Automatic or fast system of Telegraphy, but to
improve and perfect such instruments and machinery by
addixo xtiEUBTO from time to timo,such further inventions
as experience should demand, and 1ub ability ns an inventor
and electrician might suggest and permit.

Supposing, then, for tlio sake of the argument, that
1. rescott can shield himself from the equities of tho part¬
nership article by an alleged want of notice, and that tho
words ot the deed of 1871, just quoted, nro not large
enough to cover tho inventions in controversy, they nro
followed in tho latter instrument by Inngungo about which
t tore can be no doubt, and in tho conveyance, itself, viz.:

Including therein all and whatsoever of my improve¬
ments and inventions, made or to bo made, and of all tho
patents that may bo issued therefor, that abb ob mat he
ai w.ioABi.E to automatic telegraphy or mechanical print-

ATo ingenuity can controvert the fact, that these duplex
and quadruples inventions nro “ Ai>ri,iaAnr.B to Auto¬
matic Teregraphy.”

The Letters Patent, No. 156,848, dated November
17th, 1874 to Thomas A. Edison, for “Duplex Tele¬
graphy,” commcnco ns follows :

“ Iho object of this invention is to transmit two dis¬
pa e les over the same wire, at the same time, by tolegrnphs
li.MPI.OYINO PERFORATED TRANSMITTING PAPER, and cllOmi-

cnl receiving paper.”

. An,d tldB„V01'y patent, at tho request of Edison, was
ucd to Edison & Harrington. Mr. Prescott’s counsol

j, 27 of their 1st Brief) admit that tho “ automatic sys-
em,” and the “multiple transmission system maybe
jbed together, “ that is to say, sovoral messages may
“Xneou’sly transmitted by the B-ftaueous oper¬
ation of sovoral automatic signalling machines, thus ad
ing the element of ‘fast ’ to the dement 0fmul!1PUcU,J-
By the contract of 1870,' Edison & Harrington wore to
bo partners in all inventions relating to the various systems

^Thfasrignment, Edison to Harrington, of 1871, recites
the previous agreement between these parties, and tk
tZZ, thus clearly expressed, will aid to construe the

laTr^cmfcould^capct'the force of ^is “greement
on tho ground that he had no notice of it which : de
nied, surely ho is bound by the u.icquivooal erms ol
assignment itself, which cover, as a ;ove 9‘ ° vl ^10t “
by equitable construction, but as a matter of fact, the inve
tions now in dispute. jj. B. LATROBE,

LEONARD MYEKS,

Of Counsel for Barrington.

Hr! mem <

THE WESTERN UNION TELEGRAPH COMPANY
Complainant*,

THOMAS A. EDISON and GEORGE U. PRESCOTT’,
Defendants.

ANSWER OF THOMAS A. EDISON.

KEASUE'

■ NEW YORK:

U A K B It &■ Q 6 D w. I N, P H I N T BUS,

No. 35 P a It K Itow.

1875.

GkOKOE B. PltESCOTT,

Defendants.

The. several answer of Thomas A. Edison, one of the
defendants to tho J>ill of complaint of The Western Union
Telegraph Company, complainants:

This dolcndnnt now and at all times hereafter, saving
nnd reserving to himself all manner of benefit nnd advan¬
tage of exception to the errors, nnd insufficiencies in the
complainants’ snid bill of complaint contained, for an¬
swer thereto, or unto so much and such parts thereof ns ho
is advised is mntorinl for him to make answer unto, answers
and says :

That he admits that tho Western Union Telegraph Com¬
pany is a corporation doing business under the laws of the
state of Now York for tho purpose of operating telegraph
lines in that state nnd olsowhcre, and having its principal

plnco of business in the city of Now York, irad that this
defendant wns boforo and since January, 1874, n resident
of the city of Newark, in this stnto.

But this defendant denies that in or previous to the snid
month of January, lie entered into any arrangement or agree¬
ment with the complainant that this defendant should en¬
deavor to invent improvements in Stearns’ Duplex System
of Telegraphy, and other Duplex apparatus, nnd should use
tho lines and workshops and materials of tho complainant for
that purpose, except in tho manner and under the circum¬
stances hereinafter particularly sot forth. And ho domes thnt
ho over made any agreement with tho snid company, thnt
whatever inventions should bo mado by him, nnd nil patents
thnt might be secured therefor, should bo assigned nnd con¬
voyed to tho complainant upon payment of such price ns
should be ascertained by agreement or'liy arbitration.

And this defendant, further answering, snys :

That the circumstances under which ho used tho wires
nnd property of tho said company for tho purposes of exper¬
imenting for improvements in Telegraphy concoivcd by
him, and his relations to tho . snid complainant with refer¬
ence to the salo and transfer of his inventions nnd patents
are hereinafter fully and particularly sot forth.

And this defendant, further answering, admits thnt ho wns
from timo to time, ns hereinafter stated, allowed to use the
services of somo of the omployces of tho complainant, nnd
that his experiments were continued for sovoral months in
endeavoring to invent improvements hy which moro than
one incssngo could bo sent over ono wiro at tho snino time,
but ho denies Hint tho snino wns hy virtue of, or in pur¬
suance of, any arrangement or agreement for tho sale
or transfer of his inventions or patents ns stated in snid
bill, but solely for tho purposo of enabling him to per¬
fect nnd develop his improvements, to ho disposed of
thereafter ns lie might deem best for his own advantage.

And this defondant, furthor answering, doilies each and
ovory of tho statements of tho snid bill concerning his agree¬
ments with Gcorgo B. ProBoott, tho electrician of tho snid

complainant, and Ids negotiations with the said complainant
for tho salo and transfer of his inventions and patents, ex¬
cept so far ns the same are admitted nnd explained in
the statoment of said transactions hereinafter contained.

And this defendant, further answering, says thnt ho is
now twenty-olglit years of age, nnd is an inventor and olcc-
tricinn, having been engaged in that business for fifteen
years nnd more ; thnt from n very early ago his attention
lias been directed to tho invention of telegraphic apparatus
nnd methods; thnt prior to 1809 ho had been employed ns
a telegraphic operator in the Western Union Telegraph
ollico at Cincinnati nnd elsewhere, and in that year he had
a small shop of his own in Boston, nud then applied for a
patent for his first perfected machiiio which wns n machine
for recording telegraphic signals by printing; that sinco
that timo ho has directed liis attention to improving the
the facilities with which such signals might bo transmitted
and recorded ; thnt while employed ns an operator lie wns
engaged in attempting to invont the requisite machinery
and means to carry forward what is now known ns Duplex
Tolographing, which experiments began ns early as 1805.

And this defendant, further answering, says'that in the
courso of these experiments he became satisfied thnt a wire
could ho used for double transmission, nnd that by an ar¬
rangement of different forces of battery two messages could
be sent at the snino time for nil practical purposes over the
sumo wire, nnd this defendant sot himself to work in his
little shop for tho purpose of developing, improving, nnd
reducing to practical results hy machinery, these ideas, ns
well ns prosecuting his experiments in Printing Telegraphs
or recording tho signals automatically on paper.

And this defendant further snys, that leaving for a timo
the furthor immediate development of Duplex Machines,
he dovoted himself moro particularly to the invention nnd
perfecting of machinery for automatic telegraphy, and ob¬
tained his first patent for such a machine, which resulted
in the improvements in tho automatic machines now so
lnrgoly used hy bankers nnd others, for which improve-

incuts lie obtained a largo number of patents, but at the.
samo time lie was engaged from time to time in experiment¬
ing upon tlio idea of duplex telegraphy.

And this defendant, further answering, says that in
September, 1870, being desirous of continuing Ins experi¬
ments in duplex telegraphy, and also of having the
menUB of manufacturing and perfecting his machines for
automatic telegraphy, and having at that time the com¬
mand of very limited means for tlioso purposes, lie entered
into a written contract with George Harrington, made and
executed on the ilrst day of October, 1870, a copy of which
contract is hereto annexed and marked Schedule 1, by which
it was agreed that the said George Harrington and this de¬
fendant should go into a joint business or partnership, to
continue for the term of live yenrs, upon the terms and con-
ditioiiB set forth in tlio said contract, which partnership or
joint business was to be for the invention and manufacture
of all kinds of machinery, instruments, tools, battery ma.
tcrinls, and all that should be required by tlio various sys¬
tems of telegraphy, and in which this defendant and the
said George Harrington wore to be iutorcsted as joint
owners ill all original inventions and improvements in¬
vented. purchased or obtained by them or cither of them,
ami in all interests and profits arising therefrom in the
proportions' set forth in said contract, us by reference to
the same will more fully appear, excepting, however, the
automatic reporting machine used by stockbrokers, which
had been previously sold by this defendant.

And tins defendant further says that by that contract
1m bucumc bound to devoto all liis inventive powers and
talents to the business and interests of said firm, anil to
admit no other parties to any direct or indirect interest in
or to any inventions or improvements made or to bo made
by him, except as sot forth ill said contract, but that all
such should inure and bolong to this defendant and tlio
said Harrington in the proportions thcrciu provided, and
not to invent or transfer to any other parties any improve¬
ment that would bo usofnl or desired in automatic tele¬

graphy ; and by said contract it was provided that lor an;
original inventions and improvements made by this do
Iciidant other than such ns might ho suggested or nrisi
from the current work, this defendant should be paid hi
the firm additional compensation, to ho adjusted in tin
manner pointed out in said contract.

And this defendant, further nnsworiug, says that nude
said contract the said joint business was begun and carrici
on in the city of Xownrk, in this State, and machinery am
a shop were provided, and n lnrgo amount of money ox
pended by the said Gcorgo Harrington in order to earn
out the purposes of said partnership, and this dcfemlan
wont on to perfect his inventions in printing and automata
telegraphy and other machines and devices, and whatove
else might grow out of such experiments.

And this defendant, further answering, says that al
though the said partnership business wns not pecuniarily
successful ns a manufacturing operation, the ]
part of the business wns successful, and a large number o
patents were obtained for various devices and improve¬
ments relative to lmtchiiicry for utilizing the action o
electricity, which were directed to bo issued to the sail
Harrington and this defendant jointly under said contract
ns they were perfected.

And this defendant, further answering, says that ii
order to promote unity of action in regard to tho said busi
ness mid the disposition of any inventions and improve
incuts made or to bo made by this defendant, for the join
benefit of himself and said Harrington, this dcfemlan
entered into a further agreement in writing with tho sail
Harrington, on tho fourth day of April, 1871, a copy o
which is hereto annexed and marked Schedule 2, by wind
it was recited that this defendant had agreed to invent am
construct instruments and machinery that should dovelo]
into practical use the Littlo or other system of automata
or fast system of telegraphy, and to improve and porfoc
such instruments and machinery by adding thereto iron
time to time such further inventions ns experience and hi

lility ns nil inventor nnd electrician should suggest, and
ropiiro drawings and obtain patents I'or all such inventions,
hich woro to be tlio joint property of said Harrington and
lis defendant, nnd such patents to bo issued to them
,i„tly in tlio proportion of two-thirds to said Harrington
nd one-third to this defendant, and the whole to he under
,o solo control of said Harrington, with power to sell and
isposo of the same ; nnd also that the said Harrington had
uthfully fulfilled all of his covonnnts lind stipulations cn-
jred into witli this defendant. And after such recitals,
liis defendant did, by said contract, assign and set over to
aid Harrington two-thirds in interest of all his said invon-
ious nnd of all patents, whothor issued or applied for or
hereafter lo be applied for, and ot nil patents nuulo or to
io made applicable to automatic tolegrnpby or mechanical
irinting, and did constitute tlio said Harrington his true
md lawful attorney irrevocable lo sell, transfer, and con¬
vey all of tlio rights, titles, and interest of this defendant
n and to all nnd every of his said inventions nnd improvc-
ncuts, whethor made or to lie made, and to sell and trnns-
er nil rights by patent or otherwise arising therefrom
ilrondy made or to lie made, with full power to divest this
lefciidaiit of all such rights, and requesting the commis¬
sioner of patents to recognize said Harrington as such
ittorncy, ns by tlio said contract, -a copy whereof is hereto
innexed, will more fully nppear. Which contract was duly
recorded in the Patent Ofiico on tho sixth day of May,
1871, in Book U 13 of Transfers of Patents, page 412.

And this defendant, further answering, says thnt under
the foregoing agreements with said Harrington ho con¬
tinued to pursue such joint business in tho city of Newark,
and tlio said Harrington continued to furnish largo
amounts of money to conduct tho samo, nnd this defendant
still prosecuted his experiments in duplex telegraphy, and
during such experiments conceived the idea of quadruples
telegraphy, but at first with doubtful success. And in
January, 1873, having made sovornl duplex machines nnd
ono quadruples mnehino, it boenmo convenient to ltnvo an

opportunity of .testing thorn upon extended circuits, nnd
this defendant thereupon applied to William Orton, Presi¬
dent of tho Western Union 'Telegraph Company, ‘for leave
to put his machines upon the wires of thnt company when
not in uso between twelve o’clock at night and seven in
tho morning, which was granted by said Orton, who said
that ho would bo glad to have any machine developed
which would promote rapidity in telegraphing. And under
thnt permission this dcfamlant worked for nbout ono hun¬
dred nights, nnd developed tho operation of the duplex
inacliiiio until ho beliovcd it a success, and so for developed
the qundruplex machines that by further experiments they
could bo made successful.

And this defendant further says, thnt ho then appliod to
Mr. Orton to have his Duplox machines put on tlio wires ol
tho Western Union Telegraph Company for use, nnd al¬
though ho expressed a willingness to lmvo it dono, lie gave
no orders for thnt purpose, and tins defendant found him¬
self iinublo to effect it, and received no reply to a lettei
written to Mr. Orton on tho subject, just before lie wni
abent to sail for Europe, so that tins defendant was lefl
without nny means of testing his machines by practical
use.

And this defendant further answering, says, that undoi
these circumstnuccs, having no access to extended circuits
ho applied to George B. Prescott, tho other defendant tc
this suit, who was then the olcctricinn of tlio Western Union
Telegraph Company, nnd stated his difficulty to him, nnd
asked hiBiiid in hnving tho Duplox instruments put to work
on the Western Union lines; nnd to induce him to lend bit
assistance, this defendant offered to givo him a half interest
in said inventions if ho would do so, and the said Prescott
agreed to aid this defendant in that particular on conditioi
thnt he tho said Prescott should appear to bo joint in
vontor, with this defendant, of tlieso instruments, to wind
suggestion this dofohdnnt tbit constrained to assent, nlthougl
said Prescott had then dono nothing towards Bind iuvon-

And in ptll'simnco of such proposition, a contract was
entered into between this defendant mid tho said Prescott,
dated July 9, 1874, which is not alluded to in tho com¬
plainant’s bill, and a copy of which is hereto annexed, •
marked Schedule 3, by which it was recited that this de¬
fendant and said Prescott wore joint inventors of certain
improvements in telegraphic apparatus described as mag¬
netic Duplex apparatus, for which they wero about to apply
for letters patent to bo issued to them jointly, and by which
die said inventions and improvements were described ns their
joint inventions ; and it was agreed that they should have
i joint mid ct|nnl interest in the same, upon tho terms nnd
conditions therein set, forth as by the snid agreement, a
:opy of which is hereto annexed, will more fully appenr,
md which terms and conditions are substantially the same
is those contained in tho subsequent agreement hereinafter
nentioned.

And this defendant further miewcriug, says, upon tak-
ng advice as to the legality of any patents that should be
ssued to this defendant nnd said Prescott jointly, ho be¬
anie satisfied that inasmuch as tho said Prescott was not
n fact a joint inventor with this defendant, the said patents
vould be deemed invalid ; and he thereupon conn mini-
sited his doubts to said Prescott, nnd it was thought best
o make other arrangements. And thereupon on tho nine-
centli day of August, 1874, a new agreement was made,
nbstnntinlly ns set forth in the said bill of complaint,
eeiting that the inventions were made by this defendant
done, nnd providing for tho joint ownership thereof upon
he terms nnd conditions sot forth in snid agreement and
nbstnntinlly recited in said bill.

And this defendant further says, that tho latter ugree-
iiout was merely substituted for tho former one, nnd this
lefeudnnt did not receive from snid Prescott or from the
omplniimnt or nny other person any other or further con-
idorntion therefor.

And this defendant further soys, that in conscqucnco of

this ngreomont ho was permitted to put his machines upon
tho Western Union wires, and to put them at work.

And this defendant further says, that during theso ne¬
gotiations lie had told the said Prescott of his Qnndruplcx
apparatus nnd explained its operation, showing him that it

would he ninuli . re rapid nnd eilieanious than the Duplex,

nnd snid Prescott urged this defendant to lest, tho Qiindru-
plex nppnrnlue, which lie proceeded to do, nnd had it put
upon tho lino formed of a return circuit between Now York
and Philadelphia, mid worked it nil of one day in the pres¬
ence of snid Prescott anil Mr. Orton, until it was consid¬
ered so far successful ns to cause Mr. Orton to order n now
set of instruments to lie put on the line between Now York
and Boston, nnd to lie worked in the actual business of

And this defendant 1 I i

invention proved to lie a success, after
four weeks, nml tho said Orton desired
operation on a longer circuit, nnd in
defendant caused the instrument use

ing says, that tho
working three or
o have it put in
his request this
on the Boston

line to ho transferred to the Chicago wire, whore it was
used successfully, nnd the machines have been working on
that line ever since in the service of tho Western Union
Telegraph Company, except while changing into their now
building in New York.

And this defendant further says, that during all this
time the snid Prescott had paid him nothing fur snid in¬
ventions, nnd had done nothing personally about them,
except to pay some solicitor’s fees, nnd for some machines ;
and that after the invention was found to bo a success, the
said Prescott consulted this defendant ns to what proposi-
: tion should lie made to tho Western Union Telegraph
Company for the sale of it to them, no proposition having
been mndo by snid company up to that time as to a price
to be paid for it; ami thereupon this defendant drew up a
memorandum, nnd afterwards a proposition was made out
and signed by this dofondnnt and said Prescott, ns follows,

‘lion. Wm. Oirrox, President Western Union Telegraph
Company.

“ Dear Sir: Your company lms over 25,000 miles ot
wire which can now he profitably qundrnplexed. Consul-
orinjr these 25,000 miles to lie already duplexed, the quad-
ruplox will create 50,000 miles additional. For all out
patents and efi'orts in protecting the company in tho mo¬
nopoly of the same during their life, we will take one-
twentieth of the average cost of maintenance of 50,000
mil6s of wire for seventeen years — ono-.third down, ami
the balance in yearly payments during the above-mentioned
period, lmlf of such payments to cease the moment any
other person shall invent and put into practical operation
a quudruplex not infringing our patents, upon a circuit ol
400 miles in length.

And this defendant further says, that tho uliovo propo¬
sition is the only formal one that wns made, and it was not
accepted hy the company ; and this defendant being then
greatly in want of money, submitted other unsigned mem¬
oranda of lower rates to Mr. Orton, who accepted none »l
them, hut urged this defendant to oiler still lower proposi¬
tions; and these memoranda of lower rates wore not signed
hy said Prescott, nnd woro only suggested by this defend¬
ant hecauso ho wns in urgent need of money.

• And this defendant further says that in his Inst negoti¬
ation with Mr. Orton ho informally proposed to take
twenty-iivo thousand dollars nnd a royalty instead of the
Kret proposition, which would hnvo amounted to four hun¬
dred nnd fifty thousand dollars.

And this defendant, further answering, says that it ii
truo that ho received from tho said complainant tho sum ol
live thousand dollars on tho tenth day of December, 1874,
aud hofore any of tho above-mentioned propositions wen

receipt, marked inhibit A, annexed to the complnimu
bill, which wus prepared for him to sign, and falsely reel
that this defendant and said Prescott are the joint invent
of said improvements, but this defendant denies that lie
reived said sum in consideration of any agreement then
fore made with ’said company for the sale of said invuntio
or that the same was paid in execution of any such agi
meat, hut this dofcmluut says that he then needed mon
nnd being satisfied that his experiments wero successful, i
supposing that some satisfactory arrangement would
mndo for the sale of his improvements to thu complaint
lie applied to Mr. Orton for some money, and received
said sum of five thousand dollars, and gave him the root
marked Exhibit A in complainant’s hill, which recites t
this defendant and said Prescott had agreed to assign tl
right, title and interest in said inventions to the said e
puny, provided the terms of payment for such assigmn
should he satisfactorily adjusted between said parties
the said company.

And this dclcndunt. lurther answering, says that
terms of payment for such assignment were never ndjut
in a manner satisfactory to this defendant; that non
the said propositions or memoranda were accepted hy
said complainant in any reasonable time ; that this deft
ant needed more money in order to finish- some twe
(pmdriiplcx machines ordered hy Mr. Orton, nnd in oi
to procuro thu same ho repeatedly called upon said Oi
and desired him to close up the negotiation, hut was i
Bluntly put oft’ and treated with coldness and iudiflerc
and finully said Orton went to Chicago, leaving this del
ant in his difficulties, with a largo number of hands
ployed and no meuns of paying them, and also embarrassed
hy the agreement ho had been induced to uiako with said
Prescott

And this defendant further says that under these cir¬
cumstances he determined to make tho best salo of his iu-
; volitions that ho could command, being satisfied that the

that Find Prescott, ns an employee1 of tho com plain u 1 1 1, lit
only token hold of the mutter to obtain nn interest in tl
inventions without considerntion, and to put this defends!
entirely in the power of the Western Union Telegraph Con
pnny. And thereupon this defendant sold and transferre
all his right, title and interest in said inventions and paten
to Jay Gould, in behalf of the Atlantic and Pnciiie 'J’elcgrnp
Company, before any acceptance of any proposition orsii]
gostion for sale on the part of the complainant, and prii
to the filing of the bill in this cause, so that it is no
entirely out of the power of this defendant to enter ini
any further negotiation with the complainant or to iiuik
any transfer or assignment to the Western Union Tolcgrnp
Company.

And this defendant, further answering, says that th
said William Orton and George B. Prescott, at the time t
the dculiiigs of this defendant with them ns above set forth
were fully aware that this defendant, by virtue of the sail
agreements with George Harrington, mndo in 1ST0 am
18il, had been continuously engaged in experiments ii
electric telegraphy, as hereinbefore stated, and in obtain
ing patents for such of his inventions as were found to hi
important and patentable, and that the said Orton bad fill
notice thereof before ho paid this defendant the said sum o
live thousand dollars, and the said Prescott also before la
entered into said contract of August 19th, 1874.

And this defendant further answoriug says, that whei
lie entered into said last mentioned contract with sail
Prescott, and when lie gave the receipt for five thousnne
dollars, ho believed that the deed of assignment made b;
him to Harrington, on the fourth' day of April, 1871, dh
not by its terms embrace the invention of the Duplex am
Quadruples systems j and ho acted oii that opinion in all
bis dealings with said Orton and Prescott, and assumed it
;ood faith, that the snid George Harrington had no riglil
tr interest in the snid invention, or iu any of the pntonti
ibtained or applied for in rospeet to such inventions, ami

agreements made with snid Harrington.

That among such patents, and part of the rositl
this defendant’s labors were a patent dated Novcmbc
1874, for a Duplex Telegraph, the application for v
was filed in 1878, or early in- 1874, and a paten
improvements iu Duplux Telegraphy issued May, !
upon an application tiled April, 1S73, which at the tii
his dealings with Orton and Prescott, this defendant
supposed to be not included in the snid contracts
Harrington.

And this dulundnnt further says, tlint the said Gi
Harrington, tlio partner of this defendant ns above
tioned, was absent at tlio time when this defendant uni
into his arrangements with said Prescott, and on his rc
at once objected to tlio same, and insisted tlint said Prc
was not in any milliner the joint inventor of said impi
incuts, and tliat ho tlio said Harrington wns.jointh
forested in the same, and held control thereof, by virti
the contracts of this defendant, made with him us he
before set forth, and the said Harrington never m
manner assented to any propositions ii mg Inti n
the salu thereof to the complainant, but on the coni
himself negotiated and carried into cflcct, a sale tlicrci
Jay Gould, iu behalf of the Atlantic ami Pueific Tcleg
Company, on the first dny of January, 1S75, under
provisions of the snid recorded assignment and agrcei
made to him by this defendant as hereinbefore set Ii
And the snid Harrington also assented to. and ratified
and sale made by this defendant to Jay Gould as nforei
and took measures to protect his own interests in rej
to said inventions ns bo was advised.

And this defendant further answering says, that slu
liter bo rccoivcd tlio snid $5,000, lie became satislicil,
ivns advised tlint nndor bis former contracts with
Harrington, u share of snid inventions of right beloi
to him, beenuso thoy wero the result and perfeotio
« peri incuts made before tho snid partnership arrange

with him Itiul been m ndo, nnd properly passed by tin
transfers made to him by this defendant, and therefor,
this defendant on the twenty-third day of .Tannery, lS.o
addressed a communication to tiio Commissioner of Patents
advising him of the contracts made with said Harrington
and of ids claim under the same, and withdrawing ill
ropiest theretofore made for the issue of the patents, ii
the name of tills defendant and said Prescott, and ropiesl
ill" that the same lie issued to said Harrington and tin
defendant in tliu proportions set forth in tho power c
attorney and assignment dated April T, 1871, and tli
contract thorcin recited. And this defendant also, on tli
twenty-third day of January, 1875, prepared and signet
and a few days thereafter addressed and sent to sai
William Orton, ns President of Tho Western Union Teli
graph Company, a communication stating that when ncgi
tintions were opened between him nnd this defendant, th
defendant hoped, in ease tiio terms could bo agreed npoi
that lie should lie atilu to give a valid title, but that 1
was advised that the claims ol George Harrington, nnd
a prior contract and irrevocable, power of attorney (
which said William Orton was aware), and which we
still ill full force and effect, would prevent a valid transt
of snd i title to thu complainant or other parties, and th
under such circumstances all further negotiations butwe
them must necessarily cease, and that any money expen
ed or paid in anticipation of final action, this defends
was ready at any moment to return to said Orton. A
that at the same time this defendant i t
to said Prescott, inclosing a copy of said letter to Willii
Orton, President, and informing him that tho same reuse
which forbade further action with snid Orton would
validntu the agreements made with said Prescott, a
offering to return any moneys expended by said Prescott
account of this defendant's negotiations with him at r

And this defendant further says, that he lias at all th
since been willing and is still willing and ready to rot

tho said money to snid William Orton, and hereby tend
himself ready to do so.

And this defendant further nnsworing, says, that ho
advised nnd boliovos that the said Harrington or
assignees are entitled to have tho snid inventions of Hup
nnd Qtindruplcx Telegraphy brought within tho oporati
of the contracts nindo with said Harrington by t
defendant ns nforesnid ; that the snid Harrington nnd tin
interested with him have, since tho .late of tlm said fi
agreement with this defendant, expended a very largo si
of money, amounting to about four hundred thousand d
lars, in furnishing menus and facilities for this defendant
carry on his experiments and perfect his inventions in t
various branches of telegraphy, including his improvomei
in Duplex and Qiindruplex machinery, and by means
mch expenditure have enabled this defendant to secure t
mcccssful results hereinbefore mentioned. And the sii
Harrington nnd his assignees now justly claim that all
mch results are properly within the scope of the terms
the snid agreement, nnd are subject to their control by t
erms of tho agreement nnd assignment of the fourth d
)f April, 1871. By reason of which claims on the part
;nid Harrington nnd his assignees, this defendant hum
hat ho ought not to lie decreed to make any com cyan
>r transfer of the said patents to the said complainant
lerogation of the rights, so claimed.

And this dclondnut lurthcr answerin''- s«vs, that tl
legotiations between this defendant nnd said complniun
aid George B. Prescott were all founded upon a mistnki
dew of the legal rights of snid .Harrington, which mistnl
rns mutual— both parties supposing that the contract
kpril 4, 1871, was so worded as to oxcludc the Dupli
md Qiindruplex systems. But this defendant says, that 1
s now ndvised nnd believes that tho said contract of A pi
I, 1871, docs, in fact, include tho Duplex nnd Quadr
ilex systems, and that theso inventions are also umbrae.
>y tho said contract of October 1, 1870.

And tliis defendant further nnsworing, says, that lie d

irics tlmt wlmt is called in tlio complainant's bill atormal
proposition in writing,” was in any sense a formal propo¬
sition, but alleges tlmt it was a mere memorandum of torms,
loose, vague, and indefinite, not signed by tins defendant,
and never acted on by said Orton while it wns open for
consideration; and this dofondnnt donies tlmt it wns left
open indefinitely in point of time.

And this defendant further answering, says, tlmt the
said Orton took no notieo of said memorandum until after
lie bad learned that this defendant laid withdrawn alto¬
gether from the attempted negotiation.

And this defendant denies that the transaction carried
on between this defendant and said Orton and Prescott
constituted a contract, and charges that there lias been no
tender to this defendant of a contract in writing for tin
transfer of the inventions to the complainant, and for tin
payment by the complainant of the price or consideration
and no tender of any instrument of transfer nor of any
covenant to pay any' royalty.

And this defendant further says, that on the thirtccntl
day of October, ISM,, a notieo wns sent to the complninnn
by Mr. 1 Ionium, solicitor for the coinplninants in a sni
pending between Craig nnd another against The Automata
Telegraph Company nnd others, advising the complninnn
tlmt this defendant Imd assigned his inventions- to said liar
rington, and that a copy of the complaint in that enso wn
sent with such notice, whereby the complainant was full;
advised of the rights and claims of snid Harrington in rt
spect- to the inventions ol this dcteiidaut. And this di
fondant charges nnd insists that tlio snid complainant cm
not in equity require this dcfcmlnnt to do any net to intei
fere with the rights of said Ilnrrington ns claimed by hii
under said contracts.

And this defendant donies all unlawful combination an
confederacy in snid hill charged. Without this that nn
other matter or tliinir in tho snid hill charged, nnd n<

and avoided, traversed or denied, is truo to tho knowledge
or beliof of this defendant. ’

All which matters and things this defendant is ready
to nvor, maintain nnd prove ns this honorable court shall
direct, and humbly prays to he lienee dismissed with his
costs ami charges in this behalf sustained.

PA UK Ell * KEASI1KV,
.SWV.V ,(! of Counsel ,0,7 h defendant,
Thomas A. Emso.v.

State of New Jersey, Essex County, ss. :

Thomas A. Edison, the above named defendant, being
duly sworn, on his ontli snith, tlmt the matters and thing's
set forth in the foregoing answer, so far as they rclnto to
his own acts, are true, ami so far as they relate to the acts
of others he bolioves them to he true.

Til OS. A EDISON.

Sworn and subscribed this 20th )
day of May, 1875, before me. j
E. Q. ICuAsnnv,

[Schedule 1.]

Tins indenture, made this first day of October, ono tlion-
sand eight hundred and seventy, by and between Tliomns
A. Edison, of Newark, in tlio Stnto of New Jersoy, of the
first part, and George Harrington, of the city of Washing¬
ton, District of Columbia, of tho second part :

Witncssetli, that for and in consideration of ono dollnr
paid in band, one to the other, the receipt whereof is here¬
by acknowledged, and of tho mutual trust and confldcnco
which said parties have in each other, do each covenant
and agree with the other ns follows :

First. That tho said parties as nbovo named will be
partners ns inventors and as manufacturers of all kinds of
machinery, instruments, tools, battery inatcrinls, and all
and whatsoever may be required by tho vnrions systoles of
telegraphy, and of all such other machinery, instruments,
toolB, or articles or things the mauutacturo of which may
bo offered to or obtained and accepted by them, tho
said parties to be interested ns owners in nil originul
inventions and improvements invented, purchased, or ob¬
tained by them, or cither of them, and in all tho in¬
terests nml profits arising from the business of mnnu-
lncturmg m the proportions nB hereinafter set forth.

Second. That the business of said firm shall bo known
and conducted under tho name and style of TnR Amemoan
Telequatu Wouks.

Third. The place of manufacture shall bo in tho city of
Newark, Stnto of New Jersey, until such time nB it may bo
mutually agreed to select somo other locality.

Fourth. The capital of tho firm shall bo nine thousand
($9,000) dollars, of which tho party of the first part shall fur¬
nish the sum of three thousand ($3,000) dollars in the inan-
norhorcin set forth, and the party of the second part shall
furnish tho sum of six thousand ($0,000) dollars in cash.

Tho capital to ho furnished by the party of tho second
part shall consist of tho stock, machinery, tools and inven¬
tions owned wholly or in part by him, of which an
invontory shall bo made without reservation ; but so much
of the stock, machinery, tools, and fixtures partly owned
by said party of tho first part, and in part owned by one
William Unger, as aro now located and in use nt the
former plnco of business, at number filteen (in) Railroad
avenue, Newark, Now Jersey, shall be allowed to remain
there for uso by tho parties hereto, and the snid William
Ungor, under tho unexpired partnership us existing at this
date between Edison, party of tho first part, and tho snid
William Unger, hut snid shop, machinery,' tools, and fix¬
tures, known ns number fifteen (15) Railroad avenue, shall
not he uScd ns n plnce of general manufacture upon orders
to tho detriment of tho interests of the manufactory to bo
established und known as the American Telegraph Works,
under tho auspices of and to lie owned by the parties to this
indenture, it being understood and stipulated that the
gcnoral manufacture ns hcrctnforu carried on is to be
transferred to the American Telegraph Works, to bo
established under this ngreoment. And tho transfer of tho
titlo to tho stock, machinery, tools, and fixtures and inven¬
tions owned wholly or in part by the party of the first
part to the parties of tho first und second part jointly, to be
held by them in the proportions, respectively, according to
tho amount of capital furnished as herein stipulated, shall
be taken and received ns full pnyment of the proportion of
capital to bo supplied by tho party of the first part.

Fifth. The party of tho first part shall givo his whole
time and nttoution, talents, und inventive powers to the
business and interests of the firm, mid shall admit no other

ns hereinafter set fortli ; but nil such shall enuro and belong
to tlie parties of tlie first nnd second parts, ns ubovo set
forth, in tlie proportions ns sot fortli in section sixth of tills
indenture: Provided, however, That the inventions made
exclusively for tho Gold & Stock Company, which under a
contract between said party of tlie first part nnd Mr.lfnr-
sliall Lcflcrts arc to be tlie sole property of the Gold &
Stock Company, are not to be included in this agreement,
lint tlie said Edison, or party of the iirst part, binds him¬
self not to invent under said contract any machinery that
will militate against automatic telegraphy, nor to sell,
transfer or convey to any parties .whntevor, without the
consent of the party of the second part hereto, any inven¬
tion or improvement that may be useful or desired in au¬
tomatic telegraphy. And provided further, that for any
original inventions or improvements that tlio party of the
first part may make other than such ns may be suggested
or arise from the current work in the manufactory, there
shall be allowed and paid by the firm to the party of the
Iirst part a reasonable and proper compensation therefor
according to its practical value, all things considered ; such
payment to be in addition to and irrespective of the pro¬
portionate part of the profits of tlie business of the firm to
which tlie party of tlie iirst part would be otherwise entitled.
And it is further agreed that it any disagreement shall
arise as to the sum which may be claimed as “ reasonable
and proper ” to be paid for such original invention, tho
ipicstion shall be referred to an arbitrator ; if preferred by
either of tlie parties, to three disinterested parties, one to
be chosen by each, and a third by the two thus chosen, and
whose decision shall bo final and binding upon both.

Sixth. That ail profits arising from tho biisiucss of the
firm, and from all iuvontions and improvements, nnd from
tho manufactory, shall bo divided between tho parties, as
follows: One-third thereof to tho party of the first part,

and two-thirds to tho party of the second part; and all
taxes, rents, insurances and oilier expenses, and all losses
or damages, if any such shall occur, shall he paid from tlie
general rceoipts of tho firm arising from its business. If
tlicro shall bo insufficient receipts, the deficiency shall be
supplied by tho parties hereto in tho ratio of one-third and
two-thirds, or shall be taken from the capital of tho coni-

Seaenth. The partners shall be allowed and paid from
the gross revenues arising from tlie business a sum equal
to fiftcon por cent, upon tlie capital per aiinnin, to be di¬
vided into monthly payments, and a like por centum on
moneys ndvnnccd by cither party over and above their
proportionate parts of tho capital us above set forth. And
all excess of profits shall rouiuin in tlie treasury of the
firm, to lie appropriated to the enlargement of tho works
and manufactory, and extension of tlie business, as may,
from time to time, bo agreed upon. Otherwise than as set
forth in this section, there shall be no moneys or property
belonging to the firm withdrawn, taken, or used by either
partner, oxccpt upon the written consent of botli partners.

Eighth. The party of tho Iirst purl shall have control
and direction ol the mnnufactury. and shall employ and
dismiss all workmen as lie shall ileum best for the interest
of tho firm : shall purchase at lowest cash prices, without
commission, tlie machinery, tools, stock, and other necessa¬
ries required in tho maiiufnctory, and generally shall bo
responsible for tho careful preservation of tho machinery
and property of the company, and I lie economical conduct
of the ninniitactiiring part of tho business, hut the manner
of kcoping the accounts and books of the firm and manu¬
factory, nnd the employment of persons required in keep¬
ing such accounts und books, nnd all that relates to the
financial affairs of tho firm and business, and tlie dispusi-

or approved, controlled and directed, nt Ilia option, by the
party of the second part.

Ninth. Tlioro shall be no notes given, nor liny liabili¬
ties created by any member of tlio firm, without the
previous assent of both the partners.

Before contracts shall be entered into for tbe manufac¬
ture of any given number of articles, it shall be the dnty
of the party of the first part carefully to estimate the
whole amount of moneys that will bo required to fulfil
such contract, if made, and the length of time that will be
required to produce the articles wanted ; and such esti¬
mate shall be submitted to the party of the second pnrt, in
order to ascertain if the financial condition of tlio firm is
such ns to justify the outlay, and whether, when making
the contract, it should not be provided in such contract for
advances to be made by the parties for whom the work is
to be done, in proportion ns the work progresses, and before
completion.

Tenth. Full accounts shall bo kept of all business done
by the firm, and all transactions of purclinsc, manufac¬
ture, sides, receipts and payments shall be clearly and
fully recorded, together with a detailed account of all ex¬
penses of whatever character incurred. And the books
nud accounts shall at all times lie open to the inspection of
either partner.

Eleventh. Each partner shall give a true account of all
moneys, property, mnttcr, and tilings thnt may come into
his bauds, or to ids knowledge, belonging to or concerning,
or in anywise affecting, said partnership or said business.

provements heretofore mado or that may bo hereafter
by tlio party of tlio first part, or ordors for machinery
instruments, or any’ part tlioreof, thnt may bo obtninc
oithorof tho parties liorcto, shall bo. manufactured, 1
: and filled at and from the manufactory to ho Bet up
; nted, or established under this copartnership, and i
other place, shop, or manufactory, without tho conso
all tlio parties to this indenture.

Thirteenth. It is further stipulated and agreed tlin
party of the second part may, at his own option, adi
third party into the firm upon terms of equality with
and with the party of the first part, thnt is to say,
equal third part or intorcst in all tlio inventions, s
machinery, tools, anil all other property of the firm a:
the business, with one-third share of the profits and 1
arising therefrom, and one-third boncfil,nnd an assiim
of one-third of all tho liabilities of tlio firm ; Provided
by the admission of such third party the interest ol
party of tho first pnrt in flic property and business o
firm shall not lie lessened thereby, nor the stipulation
agreements anil provisions of this indenture cluing
• modified, cxcopt in so far as must necessarily follot

- admission of n third pnrtnor upon nil equal footing i
forest and in all other respects, with all tlio right
privileges, nml subject to all tho restrictions, to be enj
or imposed upon the parties to this indenture.

Fourteenth. This partnership shall continue for a p
•or term of five years, from the first day of October, eigl
'hundred and soventy unless sooner dissolved by in

- consent of all the parties.

Twelfth. It is further stipulated, agreed, and under¬
stood that the manufacture of all machinery, instruments,
tools and other articles, other than bo much aB mnjr be nee-

• Fifteenth. At tho expiration of tlio partnership,
•its final dissolution, tho property and assets, alter pi

any ono of tho partners shall die boforo tho expiration of
the partnership, tho surviving partner or partners, if there
shall bo more than one, shall account for and pay over to
tho executors, administrators, or other legal representatives
of such deceased partner his proportion of tho monoys and
of tho proceeds of all property and assets owned by said
partnership or firm. •

Sixteenth. The provisions of this indenture may be
nltorcd or modified from time to time upon tho agreement
or written consent of all parties.

In witness whereof tho said Thomas A. Edison nnd the
said George Harrington have hereunto set their hands and
affixed thoir'soals in tho city of New York, on the day and
date first above written.

(Signed) ' GEO. HARRINGTON, r

THOMAS A. EDISON. L 'J

In presence of—

J. W. TltEADWELL,

Ohab. B. Hiooinson.

{Schedule 2.] , '

Whereas I, Thomas.A. Edison, of tho city of Newark,
State of Now Jersey, for certain valid and valuable con¬
siderations to me in hand paid, and in further considers-’
tion of certain covenants and stipulations to bo fulfilled by
George Harrington, of Washington, District of Columbia,
did stipulate nnd agree to invent and construct for tho said
Harrington full nnd complete sots of instruments and ma¬
chinery that should successfully and economically dovolop
into practical use tho Little or other system of automatic

or fast systoin of tolcgrnphy, nnd subsequently to improve
and porfcct such instruments nnd machinery by adding
thoroto, from timo to time, such further inventions ns ox-
pcrionco should demand nnd'my ability ns an inventor nnd
olcctricinn might suggest nnd permit; and furthermore to
prepare or cause to bo prepared tho necessary description
papors, tho models nnd drawings requisite to obtain patents
for all such inventions nnd improvements, tho said inven¬
tions and improvements to ho the joint property of thesnid
Harrington nnd myself, nnd the patents to ho issued to the
snid Harrington nnd myself in tho proportionate interest
of two-thirds to snid Harrington nnd ono-tldrd to mysolf;
tho wliolo to bo umlor tho solo control of saiil Harrington,
to bo disposed of by him for our mutual benefit in the pro¬
portions heroinbeforo recited, in such manner and to such
extent ns ho, tho snid Harrington, should deem advisable,
with power to sell, transfer, and convoy tho wliolo or any
part of tho rights nnd titles in nnd to nny or all of said in¬
ventions nnd improvements, ns nlso of tho patent or other
rights arising therefrom. And tho said Harrington having
faithfully fulfilled nil of the covenants and stipulations
ontcrcd by him ;

Now, therefore, bo it known that, in consideration
thereof and of tho sum of one dollar to me in hand paid, I,
Thomas A. Edison, of tho city of Newark, Stnto of New
Jcrsoy, do, by these presents, hereby assign, set over, nnd
convoy to him, tho snid Harrington, two-thirds in interest
of all my snid inventions, including therein all my inven¬
tions of mechnnicnl or copying printers, nnd of all tho
patents for all sncli inventions and printers, whothor
nlrcndy issued, npplied for, or to bo hereafter applied for,
and of all nnd whatsoever of my Inventions nnd improve¬
ments made or to bo mndc, nnd of all tho patents that may
bo issued therefor, that nro or may bo applicable to auto¬
matic tolcgrnphy or mechnnicnl printers.

And whorons Inin desirous of obtaining tho co-operation
and assistnneo of tho snid George Harrington in disposing
of my snid one-third interest, as boforo recited, nnd for tho

purpose of united and harmonious action in negotiating for
its uso or its snlo and transfer by or to others in conjunction
with ids own, and in such freo and unrestricted manner as
will tend to success, and for the sum of one dollar to mo in
hand paid, the receipt whereof is hereby acknowledged,
Now, therefore, bo it known that I, Thomas A. Edison, of
the city of Newark, State of Now Jorsoy, hnvo constituted
and appointed, and by those presents do constitute and ap¬
point, George Harrington,- of the city of Washington,
District of Columbia, my true and lawful and only attor¬
ney, irrevocable, with power to substitute for mo and in
my name, and in such manner ns ho may think best, to
soli, transfer, and convoy all of my rights, titles, and in¬
terest in and to any and all of.my snid inventions, and the
improvements thereto, whether mndo or to bo mndc, nnd to
sell, transfer, nnd convey all of my rights, by patent or
otherwise, arising therefrom already mndo nnd obtained,
nnd all such ns may hereafter bo made or obtnined, and to
cxecuto in full any or all the necessary papers mid docu¬
ments requisite for the transfer of title, and to invest in
other parties full and legal ownership therein, hereby
divesting myself of and investing him, the snid Harring¬
ton, witli all the powers necessary in tho promises, fully
and completely, to carry out tho purposes and intentions
herein sot forth, hereby fully confirming all that my said
attorney may or shall do in the promises as fully ns if done
by me in person, and requesting the Commissioner of
Patents to recognize him ns such nttornoy.

In witness whereof I have hereunto sot iny hand and
affixed my seal, in the city -of Newark, this 4th day of
April, 1871.

T. A. EDISON, [t. s.]

In presence of—

A. D. Coburn,

A. B. Oandee.

[Schedule 8.]

This memorandum of an ngreomont made tho ninth
day of July, 1874, by nnd between Thomas A. Edison nnd
George B. Prescott, witnosseth :

Whereas tho 6nid Edison nnd Prescott nro tho joint in-
rontors of certain improvements in telegraphic apparatus
desuribed ns magnetic duplex apparatus, being tho inven¬
tion nnd improvements moro particularly described here¬
after, for which invention tlioy nro about to apply for let¬
ters pntont .of tho United Stntes, to bo issued to them
jointly.

And wliorcns it is desired by both parties to enter into
certain engagements- with cneli other as to their respective
interests in such patent, and in tho uso nnd benefit thereof.

Now, in consideration of ono dollar to each of snid
parties by tho other paid before tho sealing and delivery
hereof, nnd tiie receipt of which is hereby by each of them
acknowledged, it is covenanted nnd agreed by caeli of said
pnrtios with the other as follows :

lBt. That the improvements and invention of which .
they nro the joint inventors and in respect to which this
agreement is made are all those inventions for making
multiple transmission of magnetic signals for uso in tele¬
graphy which are described in twelve several specifications
now in the hands of George M. Phelps, for tho purpose ot
making models of the machinery whereby such invention
enn be operated, and being all tho inventions ot said par¬
ties, whereby, at the samo timo and on the same wire, one
message may be sent in one direction nnd one message in
tho opposite direction, or two messages at once in the samo
direction, or at the samo timo and on the samo wire two
messages may bo sont in one direction nnd two messages m
the opposite direction.

• , -r ,.'Ui

2d. Tlmt both of thorn shall Imyo nn equal, undivided
interest in nil future improvements of either of said inven¬
tions which may bo made by either of them, and that, if it
lie necessary in order to secure such interests to cither, the
other shall make an assignment and transfer of sncli in¬
terest to him in duo form sufficient to vest such interest in
him, and to entitle it to be recorded in the United States
Patent Office.

3d. That botli of the parties shall have an equal, un¬
divided interest and bo joint grantees of ail letters patent
of tho United States or any foreign countries which may ho
granted for all or any of said inventions, or of nny future
improvements thereof, and of all extensions and reissues of
any such letters patent.

4th. That whereas Edison lias heretofore exponded
$1,125 for models and patent fees, the benefit of which he
contributes to the common interest, and waives reimburse¬
ment of that sum, or any part of it, Prescott hereby agrees
to pay solely and without contribution from Edison all the
future expunse and cost of specification, drawings, models,
Patent Office Ices, and patent solicitors' and agents fees,
and all other charges incident to the procuring of letters
patent for any of said inventions.

5th. That neither of said parties will sell, assign, or
otherwise dispose of the whole or any part of his interest in
said inventions or lettors patent therefor, or any of them,
without the written consent thereto first obtained of the
other party.

Oth. That neither of said parties will liimsolf manu¬
facture, use, or sell, nor grant licenses, or tho right in any
way to any other party to limn iitiict lire, use, or sell any of
the said inventions, or any improvements thcruof, or nuy
machine embodying or articlo containing nny of said inven¬
tions or improvements, or protected by any of said letters
patent without the written consent first obtained of tho
other party.

7th. No sale of any of tho said inventions mid no
license or right to mnko or use tho same iu any way shall bo

insde or given except at a price to which both pnrties ngroo,
and all net profits shall bo equally divided between tho par¬
ties hereto.

8th. Tim covenants and provisos of this agreement
binding either of the parties hereto simll also bind his ex¬
ecutors, administrators, -and assigns.

In witness wheroof tho said pnrties liavo hereunto
sot their hands and seals tho day mid year first above

THOMAS A. EDISON, |> «•]
GEORGE B. PRESCOTT, [l. s.]

Sonled and delivered in presence of —

R. II. Rochester.

County of New York, *s. :

On this ninth day of July, in the year one thousand
eight hundred mid sovcnty-foiir, before me, personally
, came Thomas A. Edison and George B. Prescott, to mo
known to be the individuals described in and who executed
the foregoing instrument, and severally acknowledged that
thoy executed the same for the purposes therein men-
v tioned.

R. H. ROCHESTER,
Notary Piiblio , New York oily.

RULES OF PRACTICE

UNITED STATES PATENT OFFICE.

SEPTEMBER, 1875.

RULES OF PRACTICE

UNITED STATES PATENT 0FF.ICE

United States Patent Office,

September 1. 1875.

! following information and regulations, designed to
strict accordance with the revised, consolidated, and
ilcd law relating to patents for inventions and designs,
> trade-marks, are published for gratuitous distribution,
•ious forms, to which inventors and attorneys are
intended to conform as nearly ns possible, will be found

nted copies of the revised and amended law may also
tained by applying to the Patont Ollice.

WHO MAY OBTAIN A PATENT.

: If otherwise, a letter should accompany end,
to what application it belongs, and giving the 2’,?*'

arassasssoarS '

8. The application and oath must bo made by the actual Ml. ..

;r0r;,aIV°-T" if 0,0 «"«» is t0 «■£> toanaJttlri^

“Lt o'tl '0 ;UVl'“t0l'i8 llea,,■ t*10 application and *
oath must bo mado by his executor or administrator.

9. The application must bo in writing, in the English or, i„ ,
language, and addressed to the Commissioner of Patents ”S“P'
Tho petition and specillcation must bo separately signed by

tho applicant. Tho spceiBcation, claims, and all ameneb
?ac"ts must bo written in a fair, legible hand, otherwi e,
bo Office may require them to be printed ; and all inter!
liueutions or erasures should bo clearly marked iu a mar¬
ginal or foot note written on the same sheet of paper. All
. tho papers constituting tho application should bo attached
together. Legul-cap paper is deemed preferable, and a
wide margin should always bo left upon tho left-hand side
of tho page.

10. Tho applicant, if the inventor, must make oath or af- oaih M,i ]u
itraiution that lio does verily believe himself to bo tlio”“tu™-'
original and ilrst inventor or discovererof tho art, machine,
manufacture, composition,- or improvement for which ho
solicits a patent; thuthodoes not know and does not bc-
liovo that tho sumo was ever before known or used ; mid
shall state of wliut country ho is a citizen, and of what a
resident. If tho application bo mado by an executor or
administrator, tho form of tho oatli will bo correspondingly
clinugcd. Tho oath or affirmation may bo mado beforonny
poison within tho United States, authorized by law to ad¬
minister oaths, or, when tho applicant resides in n foreign '
country, boforo any minister, churgtS d'affaires, consul, or
commercial ugent, holding commission under tho Govern-
incut of tho United States, orboforo any notary publio of
tho foreigu country iu which tho applicant may bo, tho onth
whig attested in all cases, in this and othor countries, by
tho proper officiul seal of such notary.

tious ; nor does tho foot that one man furnishes tho capital
nml tho otlior makes tho invention entitle them to tuko out
a joint pntout.

wimt Kill bu A l)lltont wi“ not *JO granted to an applicant if what
ho claims ns now has been, bol'oro his invention, patented
or described in any printed publication iu this or any for-
oign country, or boon invented or discovered iu this country
nor if ho has ouco abandoned his invention, nor if it has been
iu publio uso or on sale more than two years previous to Ids
application.

wile, loiowi. B- If 't appears that tho iuvontor, at tho tiino of making
Sbrawi'hu fir!1 llia application, boliovos liiiusolf to be tho ilrst inventor or
discoverer, a patent will not bo refused on account of tho
invention or discovory, or any part thereof, having been
known or used in any foreign country before his invention
or discovery thereof, it not appearing that tho samo, or any
substantial part thereof, hud beforo been patented or de¬
scribed in any printed publication.

0. Merely conceiving tho idea of an improvement or uia-
ohiuo is not an « invention ” or “ discovory." Tho invention
must have been reduced to a practical form, either by tho
construction of tho maehino itself, or of n model thereof or
by making a drawing of it, or by such disclosure of’ its
exact character that a mechanic, or one skilled iu tho art to
which it relates, can and does, from tho description given,
construct tho improvement, or a model thereof, beforo it
will prevent a subsequent inventor from obtaining u patont.

MODE OF PBOCEEDINO TO OBTAIN A PATENT.

]&• ,7, ¥° BPl,I|eation for a patont can bo placed upou iho
flies ior examination until tho fee is paid, tho specillcation
and tho petition and oath are tiled, and tho drawings mid a
model or specimens (when required) are furnished. Tho
application must bo completed and prepared for exainina-
bon within two years after thoilliug of tho petition ; mid,
l "! ,, ™11 or 11110,1 f,,lluro of tho applicant to
prosecuto the sauio within two years after any action them-
°f ,'jbicU uoHeo shall havo been mailed to him or his
ra rcear(lodas abandoned, unless it bo shown,

lwoi“ n th000UU1'iS3i0"er, that such delay was

tk,U,t emr»thi"!> Pessary to malto tho applica¬
tion complete should be deposited in the Offlco at tho samo time.

, ” 01 0lai,"S» not substantially embraced in ll,

original affidavit, ho will bo roQuirod to file a supplement
onth relative to tho invention ns covered by snob n»w
enlarged claim orclninis; mid snob supplemental oath inns
bo upon tho sumo pnpor which contains tho proposed nmoiiil

12. Tho specification isnwritten description of tho inven
tion or discovery, mid of tho mnnnor and process of nink
ng, constructing, compounding, and using tho same, and
is required to bo in such full, cloar, coneiso, anil exact terms

a to tuo different
invention for wh
nciplo thereof nud
ooutouiplated mini

1 claim of tho pending application to whichever inven-
u ho may elect; tho other inventions may bo nmdo tho
ijoct of sepurnto applications.

.7. Tho specification must bo signed by tho inventor, or
his executor or administrator, and must bo attested bv
. witnesses. Full names must bo given, and all names,
Mer of applicants or witnesses, mast bo legibly written.

8. Tho applicant for n patent is required bv law to fur-
ii u drawing of his invention, where tho imturo of tho1
o admits of it.

9. Three several editions of patent drawings nro printed
published ; one for Ofllco use, certified copies, &c., ofl
size aud character of those' attached to patents, tho
k being about 0 by !M inches; ouo reduced to half that
e, or one-fourth tho surface, of which four will bo printed
a pngo to illustrato tho volumes distributed to tho

rts, &c. ;and one reduction — to about tho same scale _ of

lcctcd portion of each drawing, to illustrato tho Official
cttc.

his work will all bo done by tho photo-lithogmphio or
:r analogous process, and in coiisequcuco tho character0
mb original drawing must bo brought ns nearly ns pos-
i to a uniform standnrd of excellence, suited to the rc-
etnents of tho process, and calculated to give the best
Its, in tho interests of inventors, of tho Offico, and of
public generally. Tho following rules will therefore bo
lly enforced, and nny departure from them will bo cer-
to^auso delay in the examination of an application for
rs patent.

a. Drawings should bo mndo upon paper stiff enough
to stand iu tho portfolios, tho surface of which must be jj
calendered nud smooth. “Two-sheet” bristol-bonrd,
or sheets cut from Whatman’s hot-pressed drawing-
paper, “antiquarian” size, nro recommended.

Indian ink of good quality, to tho exclusion of all
other kinds of ink or color, must bo omploycd, to secure
perfectly black and solid work.

tlio “ sight » precisely 8 by 13 inches. Within this mnr-
gin nil work nml signatures mnst bo included. One of
tho smaller sides of tho shcot is regarded as its top, and,
measuring downward from tho marginal lino, a spacoof
not less than 1J inch is to bo loft blank for tho inser¬
tion of title, namo, number, and date. Tho signatures
will bo placed in a space loft at tho bottom of tho sbeot.

c. All drawings must bo made with tho pen only,
using tho blackest Indian ink. Every lino and lottor,
(signatures included) mnst bo absolutely black. This
direction applies to all lines, liowovor flue, to shading,
and to lines representing cut surfaces in sectional views.
All lines must bo olonn, sharp, and solid, and they must
not bo too lino or crowded. Snrfnco shading, when
used, should boleftvcryopen. Sectional shading shonld
bo by obliquo parallel lines, which may be about one-
twentieth of an inch npnrt. Tho usual reduction will
bring them to about ono-sixticth of an inch distance.

d. Drawings- should bo made with tho lowest lines
possiblo consistent with clearness. By observing this
ralo 'tho effectiveness of tho work nftor reduction will
bo much increased. Shading (except on Boctionnl

• viows) should be used only on convox and concnvo sur¬
faces, whore it should bo used sparingly, and mny oven
there bo dispensed with if tho drawing is otlicrwiso well
executed. Tho plane upon which n sectional view is
taken should bo indicated on the general view by a
broken or dotted lino. Heavy lines on tho shudo sides
of objects should bo used, except where they tend to
thicken tho work and obscure letters of reference. The
light is always supposed to como from the upper left-
hand corner, at an angle of forty-lira degrees.

Imitations of wood or surface-graining must novel-
bo attempted.

c. Tho scale to which a drawing is mndo ought to bo
largo enough to show tho mechanism without crowding,
and two or more sheets should bo used ir ono docs not
give sufficient room to accomplish this end; but the
number of shoots must never bo increased unless it is
absolutely necessary. On tho othor hnnd, when an in¬
vention is simple and easily understood, it should be
shown on a small scale, and unnecessary space should
not bo occupied, oven on a single sheet.

It often happens that an invoution, although consti¬
tuting but n small part of n machine, has yot to bo

represented in connection with other and much larger
parts. In such eases a general view on n small scnlo is
rccommouded, with ono or more of tho invention itself
on a mncli larger scale.

/. Lottors of roforonco mnst bo woll and carefully „f.

formed ; they are of tho first importance. When at all
possiblo, no lottor of reference should measure less than
ono-cighth of an inch in height, that it may boar reduc¬
tion to one-twonty-fonrth of an inch, and tlioy may bo
much larger when there is sufficient room.

Bcforenco letters must bo so plneed in thocloso and ■'V-esSS
complex parts of drawings ns not to interfere with a
thorough comprehension of tho same, and to this end
should rarely cross or mingle with tho lines. When
necessarily grouped around a certain part, they shonld Hf

bo placed at a little distance, where there is available HT

space, and connected by short broken linos with tho H

parts to which tlioy refer. Tlioy must novor appear H

upon shaded surfaces, and, when it is difficult hvavoid HI

this, a blank spaco must bo left in tho shading where HI

tho letter occurs, so that it shall npponr purlbctly dis- HI

tini-.t nml ocpnrnto ft-om tlio work. ■

If tho same part of an invention appears in more M
than ono figure, it should always bo represented by
tho same letter. Jj

When it is necessary to turn a drawing upon its side
in reading n certain figure, its number and roforonco
-letters should bo mndo to correspond, and should bo so
placed thnt the sheet will bo turned to tho right.

g. Tlio signature of tho inventor is to bo plneed nt^ stature, and
the lower right-lmnd corner of tlio sheet, and tlio sigun- 1 a
tares of the witnesses ut tho lower left-hand corner,
all within the marginal line. (Seo specimen shcot.) Tlio
title should bo written with pencil on tho back of tlio
sheet. Tho permanent nnincs mid title will bo supplied
subsequently by the Offico in uniform stylo.

When figures are larger than tho width of tho shoot,

Jho latter is turned on its side, anil tho spneo for head¬
ing will bo left at tho right, and thnt for tlio signatures
at tho left, occupying tho sarao spneo and position ns in
tho upright subjects, so thnt tho bending and names
’ will road right when tho drawing is hold in an upright
position.

tiou of a figure with express roloronce to tuo unzette,
but which might, ut the suuie time, net us oue of tho
figures referred to in tho specification. For this pur¬
pose, tho figure may be a plan, elevation, scotion, or
perspective view, according to tho judgment of tho
draughtsman. It must not cover a space oxcecdiug
sixteen square inches. All its parts should be espe¬
cially open and distinct, witli very little or no shading,
and it must illustrate tho invention claimed only, to
tho exclusion of all other details. (See Fig. I, opposite
page 42.) When well executed, it will bo nsed without
curtailment or change; but any attempt ut oxccssivo
■ fiueuoss, crowding, or unnecessary elaborateness of de¬
tail, will iusuro its rejection for Gazette purposes.

i. Drawings should bo rolled for transmission to tho
Office, not folded. •

No agent’s nor "attoiney’o otamp, nor any written
address, will bo permitted upon tho face of a drawing
within or without tho marginal line.

These rules do not apply to drawings for designs nud
trade-marks, as the Oflice does not duplicate these.
(See ltules for Designs aud Trade-Marks.)

Id applications upon dcsigus. It must clearly exhibit every
feature of tho muchino which forum tho subject of a claim
of invention, but should not include other matter tbuu that
covered by tlio actual invention or improvement, unless it
is necessary to tho exhibition of a working model. When
the invention is a composition of matter, a specimen of each
of tho ingredients and of the composition, properly marked,
must accompany tho application.

05. ti,o model must bo neatly and substantially mado of
durable material, metal being deemed preferable; and
should not in auy case bo more than one foot in length,
width or height. If made of pine or other solt wood, it
should bo painted, stained, or varnished. Glue must not
bo used, but tho parts should ho so connected ns to resist
tho notion of heat or moisture.

■>(1. A working model is always desirablo, in order to on
able tho Ofilco fully and readily to u. 1 l 1 tl t

operation of tho machine. . ,

27 Tho model, unless it is deemed necessary that it b<
preserved in tho Oflice, or unless it bo otherwise dispose!
of, may bo returned to tho applicant upon demand, and a
his expense, in all cases where an application has boon re
jeeted inoro than two yenrs; and tho model, in any pend 1
Sof less than two years’ standing, may be returned t
tho applicant upon tho flliug of a formal abandonment 0
tho application, siguod by applicant in porson.

28 -Models filed ns exhibits, in interference and othc
cases, may bo returned to tho applicant or otherwise du
posed of at tho discretion of tho Commissioner.

THE EXAMINATION.

tions to tlio nbovo rulo in rotation to tbo order of oxann.

' nation. If an application is found to conflict with a envent,
its examination will ho suspended ns hereinafter provided.

Tho first stop in tlio cxnmiuntion of any application will ho
to determine whothor it is, in all respects, in proper form.
If, liowovor, an objection' ns to form is not vital, tlio exam¬
iner may proceed to the consideration of the application on
its merits; but in such case lie must, in his first letter to
applicant, state all his objections, whether formal or other¬
wise.

inf 30. Tlio personal attendance of tlio applicant at tlio Patent-
"“'Oflleo is unnecessary. The business can bo dono by cor¬
respondence or by attorney ; and if there has been an assign¬
ment of the whole or of an undivided part of the invention,
the assiguoo, or, in the latter ense, the assignee and the
inventor jointly, will bo recognized as the proper party to
prosecute tlio application.

ltd, 31. Tbo applicant has a right to amend after tlio flrst rc-
"">1jection; and ho may amend as often as the examiner pre¬
sents any now references. After a second rejection, and at

to time of the fllin
i this can only bo n
volition docs. not ni
nt of the specillcii
f to tlio Ooimnissi

«rcrv case of amendment tlio exact worn orwoum w
stricken out or inBortcd should bo clearly specified, and
the precise point indicated wlioro tho erasure or insertion
is to bo made.

o-i whenovor, on examination, any claim for a patent is
mlcotcd for any reason whntovor, the applicant will bo
Scd thereof, and the reasons for such rejection will bo
-ivon, togothor with such information and references as
my bo useful in judging of tlio propriety or
hi supplication or of nltcring his specification; and if, nfte
Lining such notice, ho shall persist in his claim for
patent, with or without altering his specification, tlio ensi
rill ho ro-oxntnincd.

11 Unon the rejection of an application for wnnt c
,0T0lty,Pthe examiner must cite the best references
,is command, and the applicant will, ‘f * nll
he entitled to a specific rcforonco (by na.no, dato, a
riass,or tho equivalent thereon to tlio article ornrticl
by which it is anticipated. If ho desires a copy of tl
so referred to. or of tho plates or drawings co
nested with them, they will ho fonvartM to um, iHr.
possession or tho Ofiicc, on payment of tlio cost
sncli copies.

35. When the rejection , of an

35. WllCll tlio ri-jL-u,... . . .

another enso previously rejected

abandoned, tlio applicant will hi

but not withdrawn
furnished with all infi

(l, tho applicant will l>c niro
relation to tlio provion lj rejeci ted ' t

necessary for tho proper nnderstan

his own. But this rule does not

pending applications ns references.

30. Tho specification, especially if the <'l',1”1“
must hi amended and revised, if required * **«*m».
for tlio purpose 0r correcting corr(!9pomlci

or unnecessary prolixity, a of tlm invent

between tlio statement «nl1 ” or „f gn

siy-rejccwu - . .

ndiug and management
b authorize tbo citation

DATE OP PATENT.

fo° 1,1,8 been l>ni(l to the Treasurer or le i, . tl,u
\ 7 •JejiBuatod de^itariT of'tC

/ th« rim ‘S’.0*0 eertWcat“ of deposit) bo not rccoivcd at

g plication, as hereinafter provided. * 10W ,lp‘

A patent will not bo antedated.

WITHDRAWN AND REJECTED APPXICATIONS

*" " "p rrJ^cd

oTc^'actir^r^dle^o^or «**<*£&

rart:jt rsi^^r^r "*-**■ *»

regarded as eonstitati’ng » tno!™! ° U,°Ut,°,,ed’ *D1 b“

* ■

action tbcrcoa, it must bo shown to V ^’C“ra a,ler a,,J'
Commissioner that such delay was uaJ^S^" ^ ^

appeals.

CW°'' a,,y of thodS’S1 whfcMmlo" twice1" “to tal,e|0f Opat0n4
appeal from the decision of tko 7 b °“ reJcctcd> “ay

must bo filed, slgucd by the partv^Tld P0ti?0,‘in writi"S

uStunrit ®*1® Statement Of tlin rnnn ...s',

' distinctly and speci" •• nl,pcal sl,<mld l,oil|t out

- supposed errors of tho ox-

amincr’s notion, and should const!!. ,, fl

met upon which tho applienn ' elv h, °f “* nrgl" ' U
appeal. Before tho appeal is outer lined ?,"1,port °f bis U

statement will bo submitted to tZ br ‘'“board, this |f

will make nnswerinwritingtouehiiii n«r} OJ!nminori "']l° tJ ''

tlioroin. 8 touol,i,,ff all tho points involved U . J

' If tho appollnnt desires to bn i„„, ^@8

boanl, bo should so indicate wlionhn°mn y boforo 1,10
of hearing will then bo flxed nnrt dlli '‘l? np,)unI i ■ d«.v
bo given him. s«'l, and duo notice of the same

'A3. Tho oxaminors-in. chief will consider ti
when last passed upon by tho 2,m. tI,00!,80nsit™s
revising ids decisions so lim ns mv wf J’ "01'’"’010'!’
appellant. If, however, thoydiscSr oZc'nlnltV"0
by tho examiner, why a patent sl,n„i,i „ ?• "ot glvea
aiako a statement to tlttU; effect to the T183'!*’11 1 should

If affidavits are ™™i.. ! 10 Con,lm8aio,,®r.

lias been npponled, tho appllMtion will'l ^ 0ft8r tbo case
“"minor for reconsideration. ° romn,u,od to tbo

>iiiiiHy fficdl1 or."^ ainen^c™inC "“nmtttwof <?ni"IS ns or'g‘ too™,3",l,0‘

. ;«.o amonded claims; and „Ythe ,n8 ^ 7°°’ npon
upon and all proliminarv anil ! USfc bo Imssed

be^cttled before tho ease is appealed to ^e ZHt” mUSt

p™“o7™S'Zc T" 1,rCli'ni,mry 01 “tora.ediato/rr.fra„F,

L„ 7," n - f "ct> onco wpoated, will bo ro-ovnni- Ef««EJr v°m'
ta’soUin,? ST* inperson> ‘",0" written applies-
rreto b h7“ J :igr0nm,S °f U“ a»P«»'. and aimwer
of this class no ZZZ^l

Jn\ ^ Wbicb ,lavo bcon '“aril and decided on appeal ,,, ,

■ , '0 b!f7,,e',Cd ¥ «.o examiner without ita S ^'
l Commissioner; and cases which have been

ibem l^nt M7miere i,1C"iflf wi" ,,ot be reheard by
“em, except upon tho snino authority,
unses which have, been deliberately decided by one Com-

«S state or f0ttb° T"9idcrc<1 * l,is upon tho

occordanne T ,0y ,n"y’ l,owovor, bo rcoponed in

primes wind, govern th0

O^nt'i! 0n8¥ '7i0b bnV0 bcon notc(1 0,‘- by tho board a,.„.-.i. ,„ra
a- .wainhiers-m-ohiof may bo brought beforo tho Coiiimis."f r',“’r"“"
in porson, upon a writton request to that ofleot,

>u- 47. From au adverse decision upon tlio claims of ail nppli.
'cation au appeal may bo taken to tlio Supremo Court of tlio
District of Columbia sitting fa banc. In taking such ap¬
peals the applicant is required, uuder tbo rules of tbe court,
to pay to tlio clerk of tlio court a dockot-feo of ten dollars,
mid bo is also required by law to lay boforo tbo court certi¬
fied copies of all tbo original papers and ovidcuco in tlio
ease. Tlio petition should bo filed nud tbo fco paid at least
ten days boforo tlio commcneemcut of tbo term of court at
wbicb tbo appeal is to bo beard.

Immediately upon taking an appeal tlio appellant must
give uotieo thereof to tbo Commissioner of Patents, and filo
in tbo Patent-Oflieo bis reasons of appeal, specifically sot
forth in writiug.

Tbo docket for tbo trial of cases appealed from tbo dccisiou
of tbo Commissioner of Pateuts will bo called on tbo first
day of each session of tbo supremo court of tlio Distriut of
Columbia in general term. These sessions nro held tiirco in
each year, and begin respectively on tlio lint Monday iu
January, the third Monday in April, uml tlio foui-tli Monday
in September.

» J8- 111 eases of interfcreuco parties lmvo tlio sumo remedy
o by appeal to tbo examiners-in-chief, mid to tbo Commis¬
sioner, as iu' cx-parte cuses; but no appeal lies iu such cases
from tbo decision of tbo Commissioner. Appeuls in inter¬
ference cases should bo accompanied with a briof statement
of tbo reasons therefor; and both parlies will bo required
to filo briefs of their arguments at least live days beroro tbo
day of bearing. Printed briefs arc in all eases preferred.

40. All cases peudiug boforo tbo Commissioner, tho bonrd
of exnmiuers iu-chlcf, or tbo examiner in charge of interfer¬
ences, will stand for argument at 12 o’clock on tlio day of
bearing, unless some other hour bo specially designated.
If cither party iu a contested case, or tbo appelluut iu an ex-
parte case, appears at that time, ho will bo heard, but a con¬
tested case will not bo taken up for oral argument after tho
day of bearing, except by consent of both parties, if tbo
engagements of tho’ tribunal before whom the caso is pond¬
ing aro such as to prevent it from being taken up ou tbo
day of bearing, a now assignment will bo made, or tho caso

will bo continued from day todnv until i , „ '

wise ordered before tbo bearing beginl^m ' UuIess otbor-
bo limited to one hour for each counsel nrg"",onta wiU
been urgued, nothing further relatim- H Aftur mi>’ case bns
.nnlcss requested by tbo tribunal liiWnetbol"11; bcara
, caso; and all interviews for tliis n.mL ?ai°'‘ °f 1,10
interest or their attorneys, will bo luvmTaVdouielb1^
MOTIONS IN CONTESTED CASES.

to 0tst°b

scn-cd upon tho opposite party or bis - tin- ’ - bo

t INTERFERENCES.

wu may •isob° ftMta ■ “io

|^2^r:sr,ho“,,cscd“b u° et

totofcnmeonU preliminary «»«,.<
tho iam a i ^°. sottM ^,0 primary examiner, and
I8a “? c,ear,3r Uellucd; the invention which is to form
aLtr °f, ‘I10 t0,,l,0Vt^ ««■» •» ilecided to bo
Patentable, and tho claims of tlio respective parties must
fil nfim h i COnUiti<m tbat tbey will not require altera-
uou af or tbo in erfereiico lias been finally decided, unless

Mcb clim'igo^ 'CCtl Ul’°U U,° triaI “botlU1 UOCL‘3s'(ato
’ 1" "'ill bo declared in tbo folio wiug<cases :

JW® conflict in wholo or in part.

two or moru applications nro pending at
iao emuo tmio, in euch of which a like patentable invention
*ZT ?r, described, mid clafiued iu ono though not spe-

f^ly claimed iu an of them.

>»:. >ri*' n" applicant, having been rejected upou an

umpired patent, claims to lmvo rondo tho invention before
tlio patentee.

02. Tho fact that one of tho parties has already obtained
a patent will not provont an intorforenco; for, although tho
Uoininissionor has no power to caneol a patent already
ssued, ho may, if ho finds that another person was tho
)rior invontor, give him a patont also, and thus place
>oth parties on an equal footing beforo tho courts and tho
mblie.

03. Boforo tho declaration of an interference proper
irehminary intorforenco will bo declared, in which the
irimary examiner will notify tho respective parties when
lie applications of tho other parties wero illcd, together
ritli their names and residences. Bach party to tho intcr-
jrcnco will bo required to fllo a statement under oath
lving a detailed history of tho invention, showing tho
ato of tho original conception, and tho dnto that tho '
ivention was reduced to drawings or model, and tho dnto
r its completion, and tlio extent and character of use
ho l'nr ties will bo strictly held in their proof to the
ites set up in their preliminary statements. This state-
cut must be scaled up boforo filing, (to bo opened only
r tlio examiner of interferences,) and the namo of the
irty filing it and tho subject of the invention indicated
i the envelope.

Tt!,en80nn!rt0mi!nt8 S.Ua" n0k 10 open t0 tbo inspection
tho opposing parties until both havo boon died, or
ltd the time for filing both has expired: nor then, mi-
i l r fan,ined ^ tb« proper officer and
rod to bo satisfactory. At tho time of tho oxamina-
” preliminary statements tho oxaminer of inter-

f 'u l “lso mnlt0 “n oxaipination of tho proliin-
ordor In U’f (.mstitutc<1 by «'o primniy examiner,)
order to ascertain whether or not tho issue between
parties lias been clearly defined. If it bo found,
such examination, that tho preliminary .inning, Hen
ncndedT wi thiS particuIar* thc interforonco will bo

amendment. retUr"°d 10 41,0 ■■

fatU“ UP°"'Wl,°m r08ta tb0 burden of proof fails to
rcome l?n Stato.raeut' or ».«« statement fails to -
rcomo tho primafaae case mado by tho respective dates ,

nUon orYi > f 8h,0W8 tUat b0 bas nbnudoued his

8 before h ! ‘ ^ ^ iD Pub,i0 U8b ‘ban two .

boforo his npph cation, tho other party will bo entitled

bis application. The p °“ Bt * ,lnto piior
•bo used ns ovidenco in bob" f of TT °a'1 iu 110 ca8a

aso is to dotormino whether the » y "mlti"s iL Ita
. seeded with, and to Wo L 8,laI1 bo p«>-

for tbo other party. 8 01 oross-oxnininntion

fllSeS tU° tini° for

sons therefor, in tho form on v n P.le80,,t his "»■

previously fixed upon. «mdu\ it, prior to tlio day

whom rests tho lmrdcnIofl'nroo|-eK by 1,10 "PPUcant upon
been taken by such applicant tat°.mMCr?ltMt,l"°"y ba3 '
i liDrille tlio time assigned to tl o hit " °ther part*

sidcrcd closed, and, upon n rot “ i i ’ ,° C"S° wiU bo c°“'
of tho timo assiguedPto such nni tV' ma,]onttl,ooxPirntioii
set for hearing mtty bo

after. } ""° "ot ,css tbl"> t«n days there-

provided in Rulo 48. 1 ° 0 e tl10 “mmicr

' rj

fj^apsasnsras-

2h 5'EX iittortbreueo tho party who flrst filed so o,

o ,, p ,J m"J talco rebutting testimony, but shall tnko

no otlior. If tboro nro moro than two portion, tho times for
taking testimony will bo so arranged that each shall have
. a like opportunity in his turn, each being hold to go forward
and provo his enso against those who died their application
before him.

' Postponing tak* 58. If it becomes necessary for either party to liavo tho
tng tutimonv. (imo for taking his testimony, or for tho lionring, postponed,
ho must luako application for such postponement, and must
show sufficient reason for it by affidavit ns provided in little
113, died beforo tho timo previously appointed has clnpscd,
if practicable, and mast also furnish his opponont with
■ copies o'f his affidavits and with reasonable notice of the
timo of hearing his motion.

Prerequisite to, 00. An intcrforciico will not bo declared until the subject*
matter involved is decided to bo pntontnblo. If after being
declared it is found that no intcrferonco in fact exists, or
thnt thero has beon such irregularity in’ declaring tho same
as will preoludo tho proper determination of tho question of
„ nf ™ c;s ln right between tho parties, it will be dissolved,- and an appeal
may bo taken to the Commissioner in person.
r to of during tho continnnuco of an interference, it shall ap¬
pear thnt noitlior party is outitlcd to a patent by reasou of
abandonment, public use, or any other statutory bnr, tho
exnmiuor of interferences, or examiuors-in-cliicf, ns tho enso
mny be, will direct tho attention of tho Oomtnissionor to the

. j a regular hearing, Tho Commissioner, if in his judgment it

a is necessary, will then suspend tho iatorforonco and remand

J the cases to tho principal examiner for tho determination of

any of these questions.

If judgment bo bnsed upon a concession of priority by
cither of tho parties, such concession must bo in writing!
and under tho signature of tho inventor himself; nnd if there
has been nil assignment, the assignee must join in tho con¬
cession. .

romun™'’ffiStr C0- No amendments to tho specification will bo received
during the pondoucy of an interference, oxcopt ns provided
in section 01. A second interference will not bo dcclnrcd
upon a now application on tho same invention filed by oitlior
itoi'cariim tmil’arty during tho pendency of an Interference, or nftor judg*
«iSS! “ " cr’ incut, nor a rehearing bo granted, unless it be shown to the
satisfaction of the Commissioner (in person) that tho party
desiring a now interference or rchonriug lias now nnd mate¬
rial testimony which ho could hot liavo procured in time

for the. hearing, or unless other sufficient reasons bo si,n„„ ^

satisfactory to tho Commissioner. 8 bo shown,

"aasSSSSHSrW-

only of tho specifications ns refers to the intorfnrin i ,

And either party may, if ho »

mwaimifolit o0 h"""? a<1J"<lge<1"ot to interfere, and file a
now application tliercfor: Provided, That tho claims so with-
drawn covor inventions which do not involve tho devices in
interference -. And provided also, That tho devices in inter-

fram hiq ,,ow m

enso tho latter will bo examined without rororcuce to tho
intorfcronce from which it wns withdrawn.

REISSUES.

02. A reissue is granted to tho original patentee, his legal iw«inr«,* „t,
. representatives, or thonssignecs of tho entiro intorcst, wlion, m“r n|‘",y -ror-
. by ronson of a defective or insufficient specification, or by

reason of thopnteutcoclnlmingnsliisinvcntiouordiscovory

moro than ho had a right to claim ns now, tho original pat¬
ient is inopemtivo or invalid, provided tho error lmsnrison
from inadvertence, accident, or mistake, nnd without any
fraudulent or deceptive intention. In tho cases of patonts
issued nnd assigned prior to July 8, 1870, tho application
for rcisstio may bo made by the nssigneo; but, in tho enso
of patonts issued or assigned sinco that dnto, thoupplicn-
tiou must bo made and the specification sworn to by tho in-
j ventor, if ho be living.

03. Tho petition for a reissue riust bo accompanied with a wtuu must no
certified copy of the abstract of titlo, giving tho names of tK!'5”5' rctl
nil assignees owning any undivided interest in the patent;

. and in case tho application is ninilo by tho inventor, it mast
; ho accompanied with tho written assent of such assignees.

:*'■ I" applications for roissuo, under sovoral different divisions,
a petition, onth, drawing, and specification must nccotnpntiy
■ f. each division.

fa,, 01. Thogcnoral rule is, thnt whatever is really embraced w'.«i mnrni
K.in tho original invention, and so described or shown that itmc"'" nlbwc'1-
i.. digit t have been embraced in tho original patent, maybe
ijitko subject of a reissue; but no new matter shall bo intro-
induced into tho specification, nor shall tho model or draw-
.things bo amended cxcopt each by tho other; but, when
ii tlicro is neither model nor drawing, amendments mny he
3tj; made upon proof satisfactory to tho Commissioner thnt such
now matter or nmoiidmout was a part of the original invon-

tion, null was omitted from tbo specification by inadvertence
accident, or mistake, ns aforesaid. ’

J2U2S& 05 • Eciss“cd Paints expire nt tl»o end of tbo term for
u°». which tbo original pntouts were granted. For this reason

applications for reissuo will take precedence, in cxnmiun.
tion, of original applications.

J.taofmt. GO. A patentee in reissniug may, nt bis option, linvo a
separate patent for eaelt distinct and sepnrato part of tbo
invention comprehended in bis original patent, by paying
tko required fee in each case, and complying with the other
requirements of tho law, ns in original applications. Each
'division of a reissue constitutes the subject of a separate
specification descriptive of tho part or parts of tho invention
clnimed in such division ; nnd tho drawing may represent
only such part or parts. All tho divisions of a roissuo will
issuo simultaneously. If tliero bo controversy ns to one, the
others will ho withheld from issno nntil tho controversy is

to°so* examined °.7- T“ 1,11 cnscs of applications for reissues, tho original
anew. claim, if reproduced in tho amended specification, is sub¬

ject to re examination, and may bo revised nnd restricted
in tho same manner ns in original applications. Tho nppU-
cation for a reissuo must bo accompanied by a surrender of
tho original patent, or, if lost, thou by an affidavit to that
effect anil a certified copy of tho patent; but if any reissuo
ho refused, tlieongiunl patent will, upon request, be returned
to tho applicant,

DISCLAIMERS.

laimcrs. eg. Whenever, by inndvcrtcnce, accident, or mistake, tho
claim of iuven tion hinny patent is too broad, embracing more
than thntof which tho paten tco was tho original or first invent¬
or, some material or substantial part of tho thing patented
being truly and justly his own, tho patentee, liis heirs or
assigns, whether of a whole or of a sectional interest, may,
upon payment of tho duty required by law, make disclaimer
ot such parts of the thing patented ns tho disclainiant skull
2,00SV°.C 'im01' t0 1,01,1 by virtuo tl.6 patenter
assignment, stating therein tho extent or bis interest in
such patent ; which disclaimer slinll bo in writing, nttestod
£ ir“r''!or' 1 08 cs 8l'«» I)o recorded in the Patent

r p.fi -d 8,laU ‘hereafter bo considered ns part of tbo orig-

r h , Re ification, to tbo extent of tbo intorest possessed

rcwnl thereof14 "Ua bj’ U‘0S0 Cl"lm,ne ’"‘dcr 1,iw "ftCP tl)0

the expiration of the origin*! term £ fl?m
sinco March 2, 1801, can bo evtm>,i/,i n?,° 1>ntont smntod
bcon reissued in two or more dlvial'n. W^ei> ft patout has
tions must bo made for the oxteii^oTcnob’XisioT11011'

and pay int“o requisite fee not‘ more Umifsh" months nor r*^“ ^ A

“oeTrtiflearalr t0 “,0 of bis

raHnn ^ H . oxtonsion will bo signed after tho expi-

minbcntL, for 'i ■ "a1'®1 aro caution(!l1 to make their

hi Mkon H o , toUT'; 1,1 ti,ao t0 nllow ‘>*0 testimony to
r TS to b0 had’ a,,d d0ci8io“ mado, so that
tho final foo may ho paid and tho certiilcnto signed boforo
tlio patent expires; otherwise, extension.will bo denied.

I,0rf°1.1 Wh0 inte,lds t0 oi'l'oso an application for n»n.on„tr»ni.,
extension must givo notice of such intention to tho applicantor tt™."1”'^
or bis attorney of record within tho time hereafter named, ^
and furnish him with a statome.it of bis reasons of opposh

!!m'-,trCr !•» "°WiU 1,0 rceardcd 88 a Party in the case,
and will be entitled to notice of tho time and place of taking
testimony, to a list of tho names and residences of tho wit-
■ ”?ssos wll0S0 testimony may have bcon taken previous to
■ his service of notico of opposition, anil to a cojiy of tho ap-
phcatiou nnd of any other papers on illo, upon paying tho
cost of copying. Ho must also immediately file a copy of
such notico nnd reasons of opposition, with proof of sorvico
of tho same, in tho Patent Office.

If the extension is opposed on tho ground of lack of nov¬
elty in the invention, tho reasons of opposition should con¬
tain a specific statement of any nail all matter relied upon
for this purpose.

72. Tho applicant for a c\tc tf 1 to tho wtati.rcquir-

Ofilee a statement in writing, under ontli, of the ascertained oaorpcllUoMr'

. vnluo of tbo invention, nnd of bis receipts nnd expendi¬
tures on account thereof, both in this anil foreign countries.

. This statement must bo mnilo particular and in detail, un-
less sufllcicnt reason is set forth why suclra statement can-
j - not bo furnished. It must in all cases ho filed with tho pe¬
tition. No exceptions will bo mnilo to this rule.

Such statement must also bo accompanied with a certified

§§§1

cou Kfio rod- 73. The questions which nriso on cncli application for an
prwa required. extension aro :

First. Was the invention new n»d useful when patented?

Second ., Is it valuablo and important to tho public, nml to '
wbnt oxtent?

■fl’hird. Has tlio inventor been reasonably remunerated for
tlio timo, ingenuity, and expense bestowed upon it, nud tlio
introduction of it into nso 1 If not, has liis fniluro to bo so
remunerated arisen from neglect or fault on bis part?

Fourth. Wlint will bo tlio effect of tlio proposed extension
upon tbo public interests ?

No proof will bo required from tbo applicant upon tbo
first question unless tbo invention is assailed upon those
points by opponents.

To enable the Commissioner to come to a correct conclu¬
sion in regard to tbo second point of inquiry, tbo applicant
must, if possible, procure tbo testimony- of persons disinter-
. ested in tbo invention, wliicli testimony should bo taken
under oath. This testimony must distinguish carefully beticeen
the specifto devices covered by tho claims of the- patent and the
general machine in which those devices may bo incorporated.

In regard to tbo third point of iuqniry, in addition to bis
own oath, showing bis receipts and expenditures on account
of tbo invention, tbo applicant mast bIiow, by testimony un¬
der oath, that bo has taken all rcnsonublo measures to intro-
dneo his invention into general use; and that, without neg¬
lect or fault on bis part, bo bns failed to obtain from tbo uso
and sale of tbo invention a reasonable remuneration for the
time, ingenuity, and expense bestowed on tbo same, and
tho introduction of it into nso.

giving 74. In case of opposition to tbo extension of a patent by
notico. any p0r80U) both parties may take testimony, each giving
reasonable notice to tbo other of tho timo and piaco of taking
said testimony, which shall bo takeu according to tho rules
hereinafter prescribed.

Ilttm 7S. A»y person desiring to oppose an extension must
privileges. servo bis notice of opposition, nnd file his reasons therefor,
nt least ten days beforo tho day fixed for tbo closing of testi¬
mony ; but parties who have not entered formal opposition
in timo to put iu testimony may, nt -Urn discretion of tbo
Commissioner, bo permitted to appear on tho day of hear-
^ iDS’ #nd mako nr6«uienttipon tho record in opposition to tho

grant of tho extension. But in such case good cause for
tho nogleet to inako formal opposition must bo shown.

70. In contested cases no testimony will bo rccoivcd, un- Timsortainug
less by consent, which lias boon taken within thirty dnyst““'M“ir'
next after tbo filing of tlio petition for tho extension.'

77. Scrvico of notice to take testimony may bo mndo upon scrvire at
applicant, upon tlio opponent, upon tbo nttornoy of record lia°aj?l“li°t“u‘
of cither, or, if tlioro bo no nttornoy of record, upon nay
attorney or agent who takes part in tbo sorvico of notice,

or in tho examination of tbo witnesses of oither party.

Where notico to tako testimony bns nlrendy been given to
an opponent, and a now opponent subsequently gives notico
of his intantion to opposo, tbo examination need not bo post¬
poned, but notico thereof may bo given to such subsequent
opponent by mail or by tologmph. This rule, howovor, does
not apply to cx-parte examinations, or tboso of which no
notico has been given when notico of opposition is sorved.

78. In tho notico of tho application for an oxtonsion a Taking mu.
day will bo fixed for tbo closing of testimony, nnd tho day S|“y “ll lc?r'
of hearing will also bo named. Application for a post¬
ponement; of tbo day of bearing, or for further timo for ’
taking testimony, must bo mndo and supported according

to tlio snmo rules ns arc to bo observed in otbor contested
cases ; but tboy will not bo granted in such a manner as to
canso a risk of preventing a decision prior to tbo expiration
of tho patent. Immediately upon tbo closing of tbo testi¬
mony tlio application will bo referred to tbo oxnmiuer iu „J',1'r“c0 10
charge of tbo olnss to which tbo invention belongs for tbo
report required tiy law ; and said report shall bo made not
less than five dnys beforo tbo day of bearing. As this re¬
port is intended for tlio information of tbo Commissioner,
neither tbo parties nor their attorneys will bo permitted to
inako oral arguments boforo tbo oxaminer. In contested
cases briefs aro deemed desirable, and tboso should always
bo filed at least fivo dnys boforo tbo day of bearing.

79. A patent for a design may bo grnutcil to any poison, i
whether citizen or alien, who, by bis own industry, genius,""
efforts, and oxponse, bns invented or produced any now and
original design for n manufacture, bust, stntuo, alto-relievo,
or bas-relief; any now nnd original design for tbo printing
of woolen, silk, cotton, or other fabrics; any now nnd orig¬
inal impression, ornament, pattern, print, or picture, to be

printed, painted, oast, or otherwise placed on or worked
into nay articles of nmiiufaeturo; or any now, useful, and
original slmpo or configuration of nny nrticlo of manufac¬
ture, tlio samo not having been known or used by otliors
boforo his inrontion or production tiicrcof, or patented or
described in any printed publication, upon pnyinout of tlio
duty required bylaw, and othordno proceedings had tlio
same as in cases of inventions or discoveries.

1 SO. X’atents for designs nro granted for tlio torm of tlireo
and one-half years, or for seven years, or for fourtcon yonrs,
as the applicant may, in his application, elect,
i 81. Tho proceedings in applications for pntouts for de¬
signs nro substantially tlio samo as for other patents. The
specification must distinctly point out tlio characteristic
features of tlio design, and carefully distinguish botween
wlmt is old and what, is held to bo now. Tlio claims also
should bo as distinct and specific as in tlio caso of patents
for inventions or discoveries.

1 82. When tlio design can bo sutllciently represented by
drawings or photographs a model will not bo required.

. S3. Whenever a photograph or an engraving is employed
to illustrnto the design, it must bo mouutcd upon a thick
Uristol-board or drawing-paper, ten by llftccn inches .in
size;' and tlio applicant will bo roqutred to furnish toil oxtrn
copies of such photograph or engraving, (not nionntod,) of
a sizo not exceeding seven and a half inches by cloven.
Negatives will no longer bo required.

■Whenever tho desigii is represented by a drawing, each
of tlio ton copies mast bo made to conform as nearly as
possiblo to tlio rules laid down for drawings of mechanical
inventions.

TRADE-MARKS.

, SI. Any person or (Inn domiciled in the United States,
"and any corporation created by tho authority or tlio United
States, or of any State or Territory thereof, and any per¬
son, drill, or corporation resident of or located in any foreign
country which, by treaty or convention, nllbrds similar
privileges to citizens of tho United States, null who nro en¬
titled to tho oxclusivo uso of nny lnnTal trade-mark, or who
intcud. to adopt and uso nny trade-mark for oxclusivo uso
within tlio United States, may obtain protection for such

lawful trade-mark by complying with the following require-
' meats, to wit : •

First. By causing to bo recorded in tho Patent Olllco tho rrcoomtog
names of tho parties, and their residences anil place of busi-
ness, who desire tho protection of tho trade-mark.

Second. Tho class of merchandise and the particular de¬
scription of goods comprised in such class, by which tho
trailo-mark lias been or is intended to bo appropriated.

Third. A description of tlio trade-mark itself, with fac¬
similes thereof, and tlio moilo in which it has heon or is
intended to bo applied and used.

Fourth. Tho length of time, if nny, daring which tho
trado-mark lias been used.

Fifth. Tlio payment of a feu of twonty-ilvo dollars, in tlio
samo manner and for tlio samo purpose ns tlio feo required
for patents. A r

Sixth. Tlie compliance with such regulations ns may bo . ■j.j"
prescribed by tho Commissioner of Patents. H

Sccenth. Tlio tiling of a doclarntion, under tlio oath of H:

tlio persou, or of somo uiotnbcr of tho Arm or ofllcor of the H

corporation, to tho effect thnt tho jmrty clniiningprotcctioii Bl

for tho trade-mark hns a right to the uso of tlio samo, and - H|
thnt no other person, Arm, or corporation hns n right to such H

use, citlior in tho idcuticnl form or having such near resem- H

bianco thereto ns might ho calculated to dcccivo, and thnt H

tho description and fac-siiniles prc3ontcd for record nro true II

copies of tho tnulo-mnrk sought to bo protected. Tlio ontli ■» "s
must also stato tho domicile and citizenship of tlio person
desiring registration.

Thepotitionnsking for registration should bonecompnnicd
with a distinct statement or specification, setting forth tho
length of time the trade-mark has been used, tho moilo in
which it is intended to apply it, and the particular descrip¬
tion of goods comprised in tlio class by which it has been
appropriated, and giving a fall description of the design
proposed, particularly distinguishing between tlio essential
and tho non-essential features thereof.

S3. Tlio protection for such trade-mark will remain in
forco for thirty years, and may, upon tho payment of a sce-
- ond fee, bo renowetl for thirty years longer, except in cases
where such trade-mark is claimed for, and applied to, nrti-
•• cles not manufactured in this country, and ill which it
• receives protection under tho laws of nny foreign country
for a shorter period, in which caso it shall ccaso to Imyo
, forco in this country, by virtno of tho registration, at the
sauio time thnt it becomes of no effect elsewhere.

80. No proposed trade-mark will be reccivod or recorded
which is not nncl cannot become a lawful trade-mark, or
which is meroly tho ua.no of a porson, firm, or corporation
only, unaccompanied by a mark sufllciont to distinguish it
from tho sn.no nnmo when used by otl.cr porsous, or winch
is identical with a trade-mark appropriate to tho sa.no class
of merchandise .and bolonging to a different owner, and
already registered or rocoivcd for registration, or which so
nearly resomblos such last-montioned trndo-mnrk ns to be
likely to dcceivo tho -public ; but any lawful trndo-mnrk
rightfully used lit the ti.no of the passage of tho act relating
to trade-marks (July 8, 1870) may bo registered.

.» AH applications for registration nro referred in tho first
• ■ -- - ♦-'ide-mnrk examiner. From ndverso decision

Cnitcd States for moro turn two years pr.oi ro urn up
. but when a patent is taken out iu this country
invention previously patented abroad, tho American i
will expire at the same timo with tho foreign patent
there bo moro than one, nt tho same timo with the ou
log tho shortest term; but in no enso shall it bo m
more than seventeen years.

. go When application is mmlo for n patent for an
tion which has been already patented abroad, the iu
will bo required to inako oath that, according to tho
his knowledge mul bolief, tho same lias not heen iu
aso in tho United States for more than two years p
tho application in this country.

01. An applicant whoso invention has been p.
abroad should state tho fact that a foreign patent l.r
ally been obtained, giving its date, and if there h
- than ono, tbo date of each.

ay instrument ot writing, nuu sucu n-rugni
:dcd in tho Patent Oflleo within sixty day
ution, in default of which it shall bo void
subsequent purchaser or mortgagee for a v»
ration, without notice. The lees will bo tl
irescribed for recording assignments of pate
FOREIGN PATENTS.

I. Tho taking out of a patent iu a foreign e
prejudice a patent previously obtained her.
i-oven t obtaining a patent hero subsequently

imo within ouo year thercalter, :
patout with which such cavcal
orferc, such application will 1
hereof will bo scut to tho perse
io shall mo a complcto applical
time, will bo entitled to an into
application, for tho purpose of pr
and obtaining tho patent, if ho b.
or. Tho caveator, if ho would a
must fllo his application within
on which tho uotico to him is dc
Washington, adding tho regiila
orthosamo to him; and tho d
expires will bo uiontioncd in the

93. Tho caveator will not bo .
plication ponding nt tho tiuiool
application filed after the exp.
dnto of filing tho caveat ; but

i and so on from year to year as long as ho may desire If a

/ “led "it TV‘ tl,0,C"d 0f tbo yenr for Which it

f . nrchives df tho Ofllco 801' ^ rC8"rded "S ,n ,ho “«*

°f " oml: l*0, ,C1,VCnt Cnu bo /1Ic'1 secret archives of the
OOlco unless accompanied l,y an oalh of the caveator that
ho is a citizen of the United States or ir lm i, „„

Statra,Oni,niSir0Sit,CdifOr onoycarln8t Pnstwithin tho United
Stntes, and lias inndo oath of Ills intention to bccomo a citi-

f lint l.nTu ,10r 11".,eS3 1,10 ■''IMdicant also states, under oath

tho nrt° inacldnn S°'f 11,0 0risi,,nI aa" «** inventor of
art, niaohmo, or improvomont sot forth in ids caveat.

loTcutJoa ivquirf • A cai' 'eat need not contain 11s nnrfimiiun .1 •

SSr-SS:

vtzss*

"»«■*
^amiof the

assignments.

tom to an nssi^fecrln^nsjiV,1,^^0'1 ‘bat Patent shall „
.101. When tho patent is to issnn 1,. .1

ps&ss corrc8I,OMdc,,co ■«

vcy an exclusive right co„.*““'^"-

spedded portion of tho United

ssssssszrrr*zsstt

patoluol,n,!lCd'rmr ™ry soimr,,^° dghts under his
» vc y rhoria. o' T biH iuVOMion> ” »« »nySlf L” ~

ri L sllol> r,8llt3 which are not exclusive

^. convoy.,,, cos are mere licenses, and need not bo re

10a. Tlie receipt or assignnionts is not generally nckuou l „ , ,

S ^ t,“! °mCU; tllcy "•il1 <» recorded in thet turn f«” f

’"’tlsIpSSsH

for record. 0 , 0^ l>r°per subject-matters

OFFICE FEES, AND HOW PAYABLE.

10#. Nearly all tho fees' payablo to tho Patent Ofllco aro 1
0Do „ iLre(|,,'rCd,.bi' l“"'tO b0 ',ail1 *» advance; that is, “l
P?n making application for any action by tho Offlco for
Wiich a fee is payable. For tho sake of uniformity and con-
Yeuionce, tho remaining fees will bo required to bo paid in
wesnmo manner.

(inmi Tho fol,owiMe is “10 tariff of fees established by law : t
§i, "g ovory application for a design patent for
/nreo years mid six months . $10 00

On filing every application for a design patout for

sovou years . . . .

On tiling over}' application for a design patent for

fourteen years .

On tiling every caveat . . .

On tiling every application for a patent for nil inven¬
tion or discovery .

On issuing each original patent for an invention or

discovery . . .

On tiling a disclaimer . .

uiuc. wiso an extra charge will bo made for llio time con-
sinned in making any sonrcli that may bccomo necessary.

108. Tlio ilnnl fco upon a patent must bo paid within six
months after tlio time at which tlio application was allowed
and notico thereof mailed to tlio applicant, or his agent!
anil if tlio final foe for such patent, or a ccrtillcato of de¬
posit for tlio amount, bo not received at the Oillco within
that time, tlio patent will bo forfeited, and tlio invention
tkorcin described will bccomo pnblio property, ns ngniust
the applicant therefor, unless he shall make a now applica¬
tion within two years from the date of notice of tlio original
allowance.

109. The money for tho payment of fees may bo paid to
the Commissioner, or to tho Treasurer or any of tho Assist¬
ant Treasurers of tho United States, or to any of tho
designated depositaries, nntiounl banks, or receivers ol
public money,. designated by tlio Secretary of tho Treasury
for that purpose, who shall givo tho depositor a receipt or
certificate of deposit therefor, which sli ill lie transmitted
to tlio Pntont OlUce. When this cannot bo dono without
much inconvenience, tho money may be remitted by mail,
and in ovory such enso tho letter should stato tho oxact
nmonut inclosed. Letters containing money may bo regis¬
tered. Post-Ofiico money-orders now afford a safe and con¬
venient modo of transmitting fees. All such ordors should
bo mndo payable to tho “ Commissioner of Patents.”

The weekly issue will closo on Saturday at 12 o'clock.
When patents nro to issuo to nssigi _e l gnment

KEPAYMENT OP MOIilSi.

111. Monoy paid by actual mistake will
a mere chango of purpose after tho pnymi
not ontitlo a party to domand such return

112. After the first day of July, 1873, t
matter sent to tho Potent Ofllco by mail in
given | fug, othonviso it will not bo received.

TAKING AND TRANSMITTING TESTIMONY.

113. In extension, interference, ami other contested cases,
the following rules have been established for taking and
transmitting ovidoilco :

First. Bel'oro tho deposition' of iv witness or witnesses
is taken by cither party, dnb notice shall bo given to tho
opposito party, as hereinafter provided, of tho Unto and
plnco when and wlioro such deposition or depositions will
ho taken, with tho names and residences of tho witness or
witnesses then and tliero to bo examined, so that tho oppo¬
site party, cither in person or by attorney, shall havo full
jpportunity to cross-examine tho witness or witnesses :
Provided, That if tho opposito party, or his counsel, be
‘dually present at tho taking of testimony, witnesses not
lamed in tho notico may bo examined, bnt not otherwise;
md that neither party shall tnko testimony in more than
>110 place at the samo time, nor so nearly at tlio samo time
is not to allow reasonable time to travel from ouo plnco of
ixainination to tho other.

Second. Tho notico for taking testimony must bo served
>y delivering a copy to tho adverse party, or bis agent or
ittorney of record or counsel, ns provided in Kulo 77, or by
caving a copy at tho party’s usual placo of residenco with
oino member of tho family who has arrived at tho years of
liscrction, or by leaving tho samo at tho oillco of tho uttor-
oy; and such notico shall, with proof of service of the same,
ml a certificate, duly sicorn to, giving the manner and time of
talcing the service, bo attached to tho deposition or doposi-
ions, whether tho party cross-examine or not.

Third. Tho magistrate before whom tho deposition is
ikon must append thereto his ccrtillcatc, stating tho time
nd plnco at which it was taken, tho nnmo of tho witness,
jo administration of tho oath, at whoso request tho testi-
lony was taken, the occasion upon which it is intended to
o used, the names of tho adverse party, (if any,) and
hethcr they wore present; and immediately upon the close
' the examination ho shall securely sent up nil thoovidenco,
c., and forward tho smite forthwith to tho Commissioner of '
itcuts, making upon tl
lo of tho case and tho
ckngc.

Fourth. In cases of extensiou
ido, cxmirte testimonv will l«,

been taken by tho
11 bo received, un-

;

witnesses withm tho stipulated time, it shall bo Z w,
said party to give notico of tho same to he Co miS

cause of such inability, and of tho names of such icit/es,
fCPCelC,% 10 h° pr0ml % them, and of
lTr ,“Ch lCmi tttlm ‘"VWomM testimony, ail
r TZ T Cff°rlS have hcm ^ Procure ,

winch notico to tho Commissioner shall bo received by h
previous to the day of honriug aforesaid. Copies of t
papers, and notico of any motion based upon them ini
Bute 50 8enC<l "P°n tllC °1,posito P“rty> 113 Provided
Sixth. Whenever a party relies upon a caveat toesta
iisli tho dato of his invention, tho caveat itself oraccr
iled copy thereof, must bo filed in evidence, with’ duo uoti
nm ° °P11°Slt° pnrty' as no uotice ran bo taken by tl
Oillco of a caveat filed in its secret archives.

Tlio official records of tho Ofilco, and books and doc
meats contained in tho library, and other books in goner
circulation, mny bo used at tho hearing ; but notico of ai
special matter contained therein, upon which a party relic
• should bo given to tlio opposito party previous to tho dr
set for closing testimony.

111. Tho folios of each deposition must bo numbered coi
socutively, and tho nnmo of tho witness bo plainly and coi
spicnonsly written at tho top of each folio. It is deemc
desirable that tho testimony bo taken upon legal-cap pope:
with a wido margin on tho left-hand sido of tho page, an
that only one sido of tho sheet bo written upon.

. W®. TI»o testimony mny bo taken in narmtivo form; bul
if either party desires it, it must bo taken in answer to in

taken anil filed in compliance with llicso rules; but no
notico will be taltoii of any merely formal or technical
objection which shall not appear to havo wrought a sub¬
stantial injury to the party raising it; anil in such case it
should bo made to appear Hint, ns soon ns tho party became
aware of the objection, ho immediately gave notico thereof
. to tlio Office, and also to tho opposite party, informing him
at tho same time that, unless corrected, ho shall urge Ids
objection at tho hearing; hut this rulo is not to bo con¬
strued so ns to- modify well-established rules of evidence,
which will bo applied strictly in all practice beforo the
Olllee.

r 117. Tho law requires the clerks or tho various courts of
the United States to issue subpomas, to sccuro tho attend¬
ance of witnesses v '
in evidence in any c

• 1 18. In contested cases, whether of interference or of ex¬
tension, parties may have access to tho testimony on filo
prior to tho hearing, in preseneo of tkooffleer in charge;
and copies may bo obtained by them at tho usual rates,
a As a general rule printed copies or tho testimony will bo
required, but this requirement may bo dispensed with on
special application to tho Commissioner, and showing satis¬
factory reasons therefor.

Tlireo printed copies should bo furnished, two for tho use
of tho Olllee anil pno for the use or the opposing party,
llieso copies must bo filed not less than ono week provions
to tho day of hearing.

It is also desirable that all arguments should be submitted
in printed form, and all arguments filed at least two days
provions to the dny of hearing.

RULES OF CORRESPONDENCE.

110. All correspondence must bo in tho nnino of tho
“ Commissioner of Patents,” and all letters and other com¬
munications intended for tho Onico must bo nddresscil to
mn; ami alter July 1, 1873, postage must bo prepaid in
all. I f addressed to any or tho other officers of tho Bureau
they will not bo noticed, unless it bo scon that tho mistnko
was owing to inadvertence. A separate letter should in every
cim bo written in relation to each distinct subject of inquiry or
mlication, tho' subject or tho invention and tho dnto of
Wing being always cnrofully noted.

120. When an agent lias filed his powor of nttomc\ ilul c n-
executed, the correspondence will, in ordinary cases, bo held SSttSillrSfui
with him only; and a double correspondence with an as-1'8”0’™1-
signee and the inventor, or with an attorney anil his prin¬
cipal, if goderally allowed, would largely increase tho labor

of the Olllee. The assignee of an cutiro interest in an in¬
vention is entitled to hold correspondence with tbcOfllco
to the exclusion of tho inventor.

121. If the principal becomes dissatisfied he must revoke ifprincipauu.
his power of nttornoy and notify the Olllee, which will then“iMpoVcr.,t"'
communicate witli him.

122. After a second rejection nono of tho papers can bo in«pcction ^
inspected, save in tho preseneo of n sworn oQlccr; nor will EnSeJ “cuon.”'
any of the papers bo returned to tho applicant or agent.

123. Whenever it shall bo found that two or more parties
whoso interests aro in conflict nro represented by tlio same
attorney, tho examiner in charge will notify each of said c
principal parties, mid also tlio attorney, of this fact.

12-1. Asidofrom tlio caveats, which aro required by law k ArjHc
to bo kept secret, all pending applications are, as far as
practicable, preserved in like secrecy. No information w ill
therefore bo given tlioso inquiring whether any particular
enso is before tho Office, or whether any particular person
has applied for a patent.

125. But information is given in relation to any enso after ^sgt »i
a patent has issued, or after a patent has been refused, and ”r“ " 1
tho further prosecution of tho application is nbaudouod or
barred by lapse of time.

120. Tho models, in such -cases, are so placed as to bo snb- (ijA™ u
jeet to gouoral inspection. The specifications and drawings
in any particular enso enn bo seen by any one having par-
' ticu’lnr occasion to examine them, and copies thereof, as well
as of patents granted, will bo furnished at tho cost of mak¬
ing them. Copies will bo made on parchment, nt tho request
of tho applicant, on liis paying tho additional cost.

127. Even after a case is rejected, tiio application is re-
gardod ns pending, unless tlio applicant allows tho matter tma«!
to rest for two years without taking any further steps there*
in, in which caso it will bo regarded ns abandoned, and will
no longer bo protected by any rulo of secrecy. Tho spcci
cations, drawings, and modol will then bo subject to inspec¬
tion in tho same manner as those of patented or withdrawn
; Applications.

tmfxfnr.ii* 12S- Informatiou iu relation to pending eases is given so
wb'tn given. far as it becomes necessary in conducting the business of tlio
OHico, but no further. Tims, when an interference is do-
. dared between two pending applications, each of the con¬
testants is entitled to n knowledge of so much of bis oppo-
, neat’s ease ns to enable him to conduct ids own uiidcrstnud-
ingly.

aimtailSi™"."™ 12a' 11,0 onlco cnuuot respond to inquiries ns to the nov-
i“™“flti«cnrt>i» eI,y of 1111 all°80<1 invention in advance of an application for
general. a patent, nor to inquiries founded upon brief and imperfect
descriptions, propounded with a view of ascertaining whothcr
such alleged improvements linvo been patented, nml if so,
to whom ; nor can it act ns an expounder of the patent law,
nor ns counselor for individuals, except as to questions aris¬
ing within tbo Omcc. A copy of the rales, with this sec¬
tion marked, sent to the individual making an inqniry of tlio
character referred to, is intended ns a respectful answer by
tlio Office.

Tvia. a"oV”w 130> AU business with the Office should bo transacted in
i»in “mins, writing. Unless by tbo consent of nil parties, the action of
.the Offico will bo based exclusively on the writton record.
No attention will bo paid to any alleged verbal promise or
understanding, in relation to which llicro is any disagree¬
ment or doubt.

ATTORNEYS.

Aitorcpya. 131. Any person of-intelligcnco and good moral character
may appear ns tlio ngont or the attorney in fact or an appli¬
cant, upon "filing a proper power of attorney. As the value '
of patents depends largely upon tlio careful preparation of
' ^*o specification and claims, the assistance of competent

counsel will, iu most cases, bo of advantage to the applicant,
tort tIia value of their services will bo proportioned to their

/skill and honesty. So many persons have entered this pro¬
fession of late years without experience that too much caro
cannot bo exercised iu tbo selection of a competent man.
The Office cannot nsstnno responsibility for tlio nets of attor¬
neys, nor can it assist applicants in making a selection. It
will, however, bo a safe rule to distrust those who boast of
the possession of special and peculiar facilities in the Offico
for procuring patents iu a shorter time or with more ex¬
tended claims than others.

toraoy'Vir ..m Po"'ora of ““oruey to authorise the attorney to sub-
«*• statute for, or associate with, himself a second agent, must

contain a clause of substitution ; but such powers will not
authorise tlio second agent to appoint n third.

r“ i,ltcrvi“'vs with oxniii i ers wi l be ais'

'STM iu

with tbo ®3i™'''S‘t'kldecomn^

;=KfS2SSKS5:rrH

case; and for lesser offenses attorneys may bo reffised tlm
privilego of ornl interviews, and bo required to transaotall
business with tlio Offico in writing. 1 1

; ^5' As ,nc™tors of Congress cannot examine cases, or T. ,,

not m them without regular powers of attorney, and as cases ’i
™““0t b° t”kc" ,,p °frt of their regular order upon their E5c““"*™”™s;
reqet ul tie loi j t tt g papers to and
from the Capitol involves a loss of time which would bo
avoided by communicating directly with tlio Officii, appli-
cants are recommended not to add to the sufficiently ardu-
oils duties of their Representatives by ordering-copies or '
*hciiiU>tl"e f° tlllllS1,0t bnsillcss with the Office through
LIBRARY.

136. No persons are allowed to tnko books from the library iibrarjrtsnia.
except thoso employed in tlio Office. ‘ °M'

AU books taken from tlio library must bo entered in n
register kept for the especial purpose, and returned on tbo
call of tlio librarian.

Any book lost or defaced must be replaced by another.

" -Patentees and others doing business with the Offico can
oxnmiuo tlio books only in tho library-hall or tlio attorney’s
room in tho Ofilce.

^ All translations will be made at tho usual rates by tho

No person will bo allowed to mnko copies or tracings from
works in tho library. Such copies will bo furnished at tho
U6iinl rates.

Approved.

0. Delano,

Secretari/ of the Interior.

APPENDIX OP POPJIS.

To the Commissioner of Patents :

Your petitioner, a resident of - , - , prays that letters patent

bo grautcil to him for tlio invention sot forth in tho nnncxod specification.

To tho Commissioner of Patents ;

Yonr petitioners, residing respectively in. - , — - , and - ,

- , pray that letters patent mny bo granted to them, as joint invent¬
ors, for tlio invention sot forth in tho annexed specification.

To the Commissioner of Patents :

Your petitioner, arcsidontof- - , prays that letters patent may

bo granted to himself and 0. D., of - , as his assignee, for tho inven¬

tion sot forth in tlio annexed specification, the assignment to tho said 0.
D. having been duly recorded in tho Patent Office, in liber — , pag^

4. By an administrator.

To the Commissioner of Patents:

Yonr petitioner, A. B, of - , - - , administrator of the estate

of 0. D., deceased, (ns by reference to tho duly-certified copy of lottos
of administration, hereto annexed, will more fully appear,) prays that
letters patent may bo granted to him for the invention of the said 0.

D.. sot forth in tho annexed specification.

* A. B., Administrator, ivc.

To tho Commissioner of Patents :

executor of tho last will and

of letters testamentary, hereto annexed, will more fully appear.) nmra
Hint letters patent may ho granted to him for tlio invention of the said
0. D., sot forth in the annexed specification. u

A. B., Executor, ,0c.

0. Poll A REISSUE, (nv THE INVENTOR.)

To the Commissioner of Patents :

Your petitioner, of - , - .prays that he may ho allowed to

to iZ M ra S P“,t0,"i t0r "" ^"Pfoveincnt in coal-scuttles, granted
to him May 10, ISO/, whereof he is now sole owner, for, “ whereof C D

Tho undersigned- .-isssignc/
tho above-mentioned letters
application.

o of tho entire for an undivided] interest in
pntent, hereby assents to the accompanying

7- Fob a reissue, (by assignee.)

(To bo used only when tho inventor is dead, or the original patent was
issued and assigned prior to July S, 1870.)

To the Commissioner of Patents :

Your petitioners, of the citv of _ „

way bo allowed to surrender the letters patent foTT' U“tth?'
coal-scuttles, granted May 10, 1SC7 t„ K F now £ " “

patent may'bSss'jfed1 to them for tl U'° °n“r° i,,tC,'CSt’ n’,,d
amended spooiZl,, a ' „ for tI,08a'"«i'‘vention, upon the annexed
title, iS “ .

3. Fob an extension, (by a patentee.)

To the Commissioner of Patents :

PnteZ No! 12811^ f« Zimnrovem Ti — l - ’ 1)rnl's tl,nt lcttcrs

August 17, 1853, may ho oxtondod°for " Svt*nni'C,,ei''CSl grn,,to<1 10 llim
expiration of tho original term ' f * ycnrs from n,,d nftcr tbo

O.FOR AN EXTENSION, (BY AN ADMINISTRATOR. ^
To tho Commissioner of Patents •

Your peHtionor A. B of - , - , administrator of tho e

| °f O. deceased, (os by roferenco to tho duly cortifled copy of 1,
ot administration, hereto (annexed, will more fully appear,) res
ftt . ' > PWJ* that Lottors Patont No. 12842, for an iinr

mont in stoves, granted to said 0. D., August 24, 1853, may bo oxti
for seven years lVom and otter tho expiration of tho original term.

A. B., Aclministra

0. Fob letters patent bob a design.

To the Commissioner of Patents :

Your petitioner, residing in - , - , prays that lottors p

mny bo granted to liim for the term of three and ono half yea:
“ SOV(m years,” or “ fourteen years”] for tho new and original desi;
forth in the annexed specification.

To tho Commissioner of Patents :

. Your petitioners respectfully represent that tho Arm of A. B., 0.

Co., is engaged in tho manufacture of woven fabrics at _ , —

and at — - , - , anil that tho said Arm is ontitlcd to tlio oxol

uso upon the class of goods which they manufacture of tho trade-
described in the nnnoxed statement or spcciAcntion, [anil accompni
facsimile.]

They therefore pray that they may ho permitted to obtain protc
for such luwful trade-mark under tho law in such cases mado and
vided.

To the Commissioner of Patents :

Yoiir petitioner represents that on Mny 8, 1808, ho died an ap
tion for letters patent for nil improvement in churns, which npplic
was allowed July 7, ISOS, but that ho failed to mako payment c
Anal fco within tho time allowed by law. [Or, “ which npplieatio
been rejected but has not been abandoned."] Ho now makes ran
application for letters pntent for said invention, anil prays tha
original spcciAcntion, oath, drawings, and model may bo used ns n
■ of this application.

IS. Petition

1’OWER OF ATTORNEY.

To tlic Commissioner of Patents:

Your petitioner, n resilient of the city of - , Stato of —

that letters patent may bo granted to him for the invention si
tbo annexed specification ; and lie hereby appoints 0. D., o

of — — State of - , his attorney, with fall power of sn

and revocation, to prosccuto tins application, to mnko niton
amendments therein, to receive the patent, and to transact al
in tbo Patent Office connected therewith.

11. Power of attorney.

If tbo power of attorney be given at any time other than tl|i
ing application for patent, it will be in substantially tbo follov
To the Commissioner of Patents :

Tbo undersigned having, on or about tbo 20th day of July, 1
application for letters patent for nu improvement in a horse-pow

appoints 0. D., of tbo city of - , State of - , his attoi

full power of substitution and revocation, to prosccuto said a[
to make alterations anil amendments therein, to receive tiio pi
to transact nil business in tbo Patent Office connected tlierow

Signed at - , and Stato of - , this - day of —

15. Revocation of power of attorney.

The undersigned having, ou or about the 20th day of Decora

appointed 0. D., of the city of - anil Stato of _ , his

to prosecute an application for letters patent, made on or aboi
day of Jane, 1SGS, for an improvement in the running-gear ol
hereby revokes the power of attorney then given.

Signed at - , - , this 21st day of July, 1809.

SPECIFICATION.

10. For a stAcniNE.

To all whom it may concern :

Be it known that I, flioro insert tbo name of tbo inventor 1 o

in the county of — — , and Stato of - - , have invented a

useful improvement in saw-toothing machines, which iinprov
ully sot forth in the following specification, reference being li

accompanying drawings :

The object of my invention is to rapidly form, on tiio blade o
saw, teeth gradually decreasing in sizo from tiio broad to tin
th,° tUo 00“WMtion, in a saw-t tl g inoeli

b“r a ’ 1,1 !‘"d 11 oImi,1> 01 its oauivalont, with rollers,
t 810 forcnrrJ'i'ig tbo blade A, as shown in
speotivo view, Pig. 1, 0f tbo nccoinnnnvlii<r draw L

«! m

The machine is llustratcd more in detail in tlio plane view, Kg. 3, and
in tho vertical section, J?ig. 2, hi which it lias not boon doomed necessary
to show tho driving mechanism. Tho blade is held by and between tho
two upper rollers, a (tho lnttor being a fecd-rollor,) and two lower
rollers, b b\ and is made to travorso in tho direction of tho arrow, at a
gradually decreasing speed, by causing a barrel, D, to unwind a chain
or its equivalent from a tapering barrel, E, on tho shaft B. The sovernl
shafts lmvo their bearings in a simple frame, IT, tho front portion 7t of
tho latter forming a table, which, in conjunction with tho lower rollors,
supports tho blade, as tho lnttor is cniised to travorso with its odges in
contact with the adjustable guides y y, on tho frame. In this table is a
fixed die or anvil,/, on which tho blndo bears, and in which is a triaugular
notch, corresponding iu shnpo to a punch, c, on a rapidly revolving
disk. Or.

As tho blndo moves at a gradually decreasing speed in tho direction of
tho arrow, tho punch will striko triangular pieces from its edge, and tho
result will bo tho formation of tho desired graduated teeth.

It will bo evident that tho driving-barrel, D, may bo tapering, and tho
barrel, E, cylindrical, or that both barrels may bo tapering, nud arranged
to reed gradually raster instead of gradually slower, with tho same result,
and that tho blade may bo clamped to a guided sliding bed, controlled
by a tapering barrel and cord or chain.

I claim ns my invention—

tflio combination in n saw-toothing machine, substantially as described,
of a tapering barrel and chain, with a roller for feeding the blade.

Witnesses : O. D.

E. V.

[Note.— Tho accompanying illustration is furnished to show what the
character and general arrangement of a Patent Oillco drawing should
be, and it is given with express reference to what lias been said rela¬
tive to tho drawing for tho Official Gazette. But it must bo remembered
. that, in coiiscqucnco of tho reduction necessary to mnko it fit tho page,
tho character of tho work itself is not that which an original drawing
on a sheet 10 by 15 inches should possess. All the shaded parts in such
a drawing should bo much more open, tho spaces between tho lines
being fully twice ns largo, so that when the same is reduced and photo-
lithographed tho result may bo clear nud satisfactory.]

17. Eon a nsocEss.

To all whom it may concern :

Bo it known that I, [hero insert tho unino of tho inventor,] of - ,

in tho county of - , and State of - , lmvo invented a now and

useful process for separating smut and other impurities from wheat,
which process is fully set forth in tho following specification:

This invention relates to tbnt class of processes employed for removing

yot warm? oifo nndThnif ^nnUs'to^Tnwire^ 8,nfe<?1 m,<1 'v,,il0

.i:,r;rrnK fJtras

i . •

f swnte, will bo entirely L ived ami tbo lio!lr""m iPr°CCSS’ 'ril‘ f,,Ily
-oto. tbb bL" of ^eS:,r 'Vi" b0 "8 ""i(0 “«• «-
i «B whooping4 U'° I",rpMC °f C‘Can-

wbolo being then passed through L,LZn-bnttPl>0SCd’- aui1 tbo

lime newly slaked and while yet warn, W° iU0P°s° to take

Ij 0 cIaim oar inventiou—

1 rrora . in . «•>, «itota„£nj „ fojSiS. “ ™UW

Witnesses : E. F. O .D*

G.H.

in thYLLrot-^'^^S of ,mm° 1 0,0 ta«“torj of - ,

nsefnl compound, called “ wool oil » , ’ bnvo 1,,V0l'ted n new and

1,1 the following specification - ’ "I,,cl1 “'"Pound is fully described

■This invention relates to ti,„f t

wool in the process of manufiLn^and oonlPO““<ls used tolnbricnte
formed by mixing any one or moro of Z J , C°,,S18ts Ul n '“■“Position
factoring wool, suck as olive hml i 8 0r<h,mrily used in maun-
an “il-soap. e’ lnul> °1' "Pwaed oil, with a solntion of

To prepare tho wool-oil taknn.«„„ „
vided tho quality ho good, and dissolvi thL 0i,:80ap °f nnrki«<l. pro-
thirty pounds ofoil-sonp to thirtv Jn° tU ? mo ln hot water, say about
>ty of soap to saturate tho Lte . t°‘ ^

aforesaid, to wit, the soap solution' STL"* lttb° WwMm. '

neutralizes the stearino in tho oil • £„« S,’ becm'60 tho oil of soap
A,Kl for t,,osamo ;

A compound consisting of nu oil or „ii„ „ ^

cation of wool, in combination with » ! ?, “arily USC|1 ■“ tho lubri-

| • tially as and for the purpose «h “ "“-"“ft s,,bs“>“-

19. Foil A DESIOX.
r 2b fill ic/iom it may concern :

Bo it known that I, [hero insert the „«•

arranged m groups of three, so ns to form triangles. P

the tU° 111,0 "I,ite 1,11(1 tbe sill° slriPes «*. while

lif b,ars ar° ° g0lrt aml ercen i but 1 110 “Ot consider tho
| colors selected to be an essential element iu my design.

1 nw mvnro .tlmt carpet-borders composed or a wide central stripe and
,,,:no"’ “d0 striPcs “ 10 “ot now, and I do not claim them. Tho
distinctive character of my design is found in the figures, which are
[ ... "fought into a border thus composed of stripes.

; , What 1 claim as my invention is—

. ■ A l'csign for a carpet iu which tho border is composed of stripes

i ornamented substantially in tho mnnncr nbovo described.

20. Fon A TItADE-JIAItK.

To all ichom it may concern :

Bo it known that X, [hero insert tho name of tho applicant,] of _ ,

in too Bounty of - aml State of - , linvo adopted for - use

. < atrado inurk for cotton sheetings, of which tho following specification is
a full, dear, and exact description :

Our trade-mark consists of tho words and letters « S. N. & Co.’s Buck-
oyo Sheetings.” Tlicso lmvo generally been arranged ns shown iu tho
; , accompanying drawing; nbovo and below tho figure of a man repro¬
secuted ns ascending tho sidoof a mountain and carrying a banner, upon
which is inscribed tho word “ Buckeye;” and tho whole has been inclosed

within nn ornamental bonier, substantially like that shown in the draw
iug. But tlio figure of tlio man with the bannermay bo omitted, orso.no
otlier dovico substituted for it, and tho border may bo changed at pleas-
uro, or omitted altogether, without materially changing the character
to„0'.,nnrk> 11,0 two essential features of which nro the letters .
S. N. & Co.’s” niul tho word “Buckeye.”

This trade-mark wo lmvo used in our business for ten years last past.
Iko particular goods upon which wo have used it nro mndo of cotton
and known ns “ sheetings;” and wo have been accustomed to print it in
bluo ink upon tho outside of eacli pieco of the manufactured goods. Wo
havo also printed it upon labels, which lmvo afterward bcon pasted
upon tho separate pieces of sheetings, and also placed upon tho outside :
ot tho cases in which tho goods have been packed.

S.X.&CO.,

Witnesses : A. B., By S’

C. D. '

21. Amendment.

„ WASHINGTON', I>. O., Jlltll 20 -lSOD

To the Commissioner of Patents: •

In tho matter of my application for letters patent for an not

3. The combination of tho self-acting brake C, pin A and slotted
flanges D, substantially as described, and for tho pmposes’set forth
A. B.(

By 0. D.,

His A ttorncy in Pact.

OATHS.

22. By a sole inventor.

’ __ (To follow specincation.)
a ti n — r-’ Co"nUj of — — > tsi:

” “fl‘ “* “

...» 1. ,«1 ..WHIM m, ,„r orJ]1Mll £*■

tuted “and that ho is a citizen of tho Bopublio of Mexico,” or “and
that ho is a subject of tho King of Italy,” or “ of the Queen of Great
Britain,” or as tlio case may bo.

It the applicants claim to bo joint inventors, tho oath will read « tlmt
1 lrs ” IT UC ICV° ,hCmSClvCS t0 b0 th0 oriSi'inl. first, and joint invont-

If the inventor bo dead, tho oath will bo taken by tho administrator
or executor, and will declare his helief tlmt tho party named as inventor
was tho original and first inventor.]

23. By an applicant for a reissue, (inventor.)

State of - , City anil County of - , ss:

A. B., tho above-named petitioner, being duly sworn, (or affirmed,)
deposes and snys that ho verily behoves tlmt, by reason of an insufficient
or defective specification, his aforesaid letters patent nro iuoperntivo or
invalid ; that tlio said error has arisen from inadvertence, accident, or
’ mistake, and without any fraudulent or dcceptivo intention, to tho best
of his knowlctlgo and belief; tlmt ho is tlio solo owner of said letters
patent; for, “that E. F. is tlio solo owner of said letters patent, and
that this application is made on tho behalf and with tho cousent of said

E, F.;”] and tlmt. ho verily believes himself to bo tho first and original
inventor of tho improvement set iortli and claimed in this amended
specification.

- A.B.

Sworn to and subscribed beforo mo this 2Cth day of July, 1809.

O.D.,

Notary Public.

[Notarial aval.]

24. By .in applicant for a reissue, (assignee.)

(To bo used only when tho inventor is dead or when’ tho patent was
issued and assigned prior to July 8, 1870.)

State of - , County of - , ss:

A. B. and 0. D., tho abovc-iinmcd petitioners, being duly sworn, (or
affirmed,) deposo and say that tlioy verily beliovo that, by reason of nn
insufficient specification, tho aforesaid letters patent granted to E. F.
aro iuoperntivo; tlmt tho said error 1ms arisen from inadvertence, acci¬
dent, or mistake, and without any fraudulent or dcceptivo intention, to
tlio best of their knowledge and belief ; that tlio outiro title to said let¬
ters patent is vested in them; and tlmt they verily bclievo the said E.

F. to bo tho first and original inventor of tho invention set forth nnd
claimed in tho foregoing amended specification: and that tlio said E. F.

Sworn to nnd subscribed beforo mo this 14th day of November, 1809
A.B.,

Justice of the Peace.

- — ii— iimj

-o. AN APPLICANT FOB EXTENSION, (PATENTEE.)

State of - , County of - , ss:

A. 33., the above-named applicant, being duly sworn, (or affirmed)
deposes and says that tlio foregoing) statement and account by him
signed nro correct and truo iu all respects and (particulars, to tho best
ot his knowledge and belief. , cst

Sworn to and subscribed before me this 1st day of November) A^D.

20. By an applicant fob an extension, (executor.)

State of - , County of-- _ , {s;

ilctnfo'/hCJnt0\°! th° lllSt nnd testnmcnt °r Simon Nowcome,
deceased, being duly sworn, (or afllrmcd,) deposes nnd says that tho
foregoing statement and account by him subscribed nro correct and trao
in ail respects and parties. are, to the best of his informntio.rkno JweS:

A. B.,

o_„„, . ' , Executor, <Cc.

Sworn to and subscribed before mo this 20th day of May, 1S09.

0. D.,

Justice of the Peace.

til. Supplemental oatii to Acemn-m- .

ACCOMPANA A NEW OB AN ENLARGED
CLAIM.

State of - , County of _ ss.

drmsw’arTd

ssgssss

Sworn to nnd subscribed before mo this Uth day of July, 1870^ B’
O.D.,

Justice of the Peace.

. . 28< 0ATlt AS 10 ™5 LOSS OF LETTERS PATENT.

State of - , County of _ , ,* . ,

aSSSr*

^ «»t l» to »0t to,, dJolZui," *“*• “ “»« -l

Subscribed and sworn to beibre me this 5tk day of October, m .

0. D.,

Justice of tho Peace.

29. OATH OF ADMINISTRATOR AS TO THE LOSS OF LETTERS PATENT-;
State of - , County of - , 8S;

A. B., of said county, being duly sworn, doth depose and say that l,o
is administrator of tho estate or 13. X, deceased, late of Boston, in said
county; that the bettors Patent No.- 12219, granted to said IS. X, and
bearing date on tho 9th day of January, A. D. 1S35, have been lost or
destroyed, as ho verily belioves; that ho has made diligent search for
the said letters patont in all places where the same would probably bo
found, it existing, and especially among the papers of tho decedent, and
tiiat he has not been able to liud said letters patent.

A. B.,

Administrator , <£u

Subscribed and sworn to before mo this uth day of October, 1808.

0. 1).,

Justice of the Peace.

State of - , County of - , ss:

A. B., being duly sworn, deposes and says that he is a member of tlio
Gnu of A. B., O. 1). & Co., abovo named ; that ho verily believes that
said firm has tho right to tho uso of the trade-mark described in tlio
foregoing spccillcation, and that no other person, firm, or corporation
lias tho right to such use, either iu tho identical form or having stick
near resemblance thereto ns might bo calculated to deceive; nud that
tho description and fau-simile presented for record nro truo copies of ■

: the trade-mark sought to bo protected, and that lie resides in -

and all tho other members of tho firm reside at - , in the Stnto of

f- - ; and that they aro all domiciled in - , nnd nro citizens of

Sworn to nud subscribed before mo this 15th day of July, 1870.

APPEALS.

31. FROM THE EXAMINER TO THE EXAMDiEBS-lN-OniEP.

To tho Commissioner of Patents!

Sib : I Iioroby appeal to tho examincrs-in-chior from tho decision of
tho principal oxnminer in tho liiattor of my application for lottois patent
for an iinprovomont in wngon-brnltes, which, on tho 20th day of July
18C9, was rejected tho second time. Tho following are assigned for rea
sous of appeal : (Hero follow tho reasons.)

A. B.

31«. From tub examiner or trade-marks to the Commissioner.
To the Commissioner of Patents:

- 1 I‘f'oby "M®1*1 10 y°“ in l>orson from tiio decision of tho exam¬

iner ot trade-marks, dated November 15, 1872, in tho matter of my ap.
plication for the registration of a trade-mark for cigars. Tho following
aie tho reasons assigned : (Hero follow tho rcasous.)

32. From the examiner in charge op interferences to the

EXAMINERS-IN-CHIEF.

To the Commissioner of Patents;

Sir : I hereby appeal to tlio exnmiuors-iii-chief from tho decision of •
the principal examiner in charge, in the matter of the intcrfcrenco be
tween my application for letters patent for improvement in sowing-ma

?? iettn » i» j* prS z:

O. D.

33. From the examiners-in-ohief to the Commissioner.

To the Commissioner of Patents;

O. D.

34. FROM THE OOMMSSIONER TO THE SUPREME COURT OF THE

DisrniGT op Columbia.

useful iinprovomont in velocinod™. n ,

1870, ho applied to tho Patent (Jlllco o t io'n.'o bi°« tto l8t dtly of May,
tho same, [or for tho rcissno of n n«to,1t ^Jf i ?d,Stflte3 for 51 foi
Juno 10, 1802,] and complied with the mf, 0' tll01'0l°1' under date ol
1 of (Jo"G"^, and with tho rules of °f tU° S0V0I”a

eases} tl.at his said application was reject'd ? « clibe(1 iu “oh
■ Intents on appeal to him on or about Tm on ,bj 4 10 Co,n|nissiouor of
in said Olllco duo notico to tho OomtataSmmor? V *""* ho lllls
peal, accompauiod with tho reasons f Pttt<mt8of ‘his hisap.

siouor has furnished him with comi)iotnnil aI’<.n"d tlmt tho Oommis-

andevidoncoin ttaonso^Ul^S ^ morn

of^eal, accompany this

; determined byyom- "W?1 Ulay b° beard and

pointed for that purpose- and that ' y "no 118 bo ap-

bo duly notified of the of Pnt°«ts nmy

thereof to tho parties interested. ^ * hnt nmnnorto Siv® notice

, respectfully showo°th : That ho ba^eSroinvonted^l^

To tho Commissioner of Patents; ?

‘ gives notice that iio'has0 nppoafed^rom vourV^0 °f - ’ heraby

E'“,“ . . . « “"•«> ji,;;:

.arr.src“'”r,,''“a“'1^ . .

A.B.

^ *»**«** COURT IN APPEARS FROM THE COM-

missioned 01' Patents, adopted November so, 1870.

; fSSfZSS? *• “ - -A - —

[ | “To the Supreme Court of the District of Columbia, in bane, _ 187-

ritmDisMMe r‘ - - ' “ oitizcl1 of - » i« the [State} Ter -

I >'• «?’ u l !! ‘ - ’ fcspcctfnHy shows ns follows :

I Kct JJ0?4 f - <lny of - > 18~» I invented [describe the sub-

; pate„t Office]™* 1"'C'U *" "‘C u1ei,l,eal Kor,u °f thc application to the

l'; latr^i 0,1 tlH> ' <bly of - 1 18— i i“ tho manlier prescribed by

‘w, i presented my application to tho Patent Olllco, praying that a pat-
; eat bo issued to mo for said invention.

“o. Such proceedings were lmd in said Office, upon said application,
that on the - day of - , 18 — , it was rejected by the Commis¬

sioner of Patents.

“(J. 1 thereupon appealed to’ tin's court, null gave notice thereof to
the Commissioner and tiled ill his Offico tho following reasons for said
appeal :

“ c. Tho Commissioner of Patents 1ms furnished me a complete copy
of all tho proceedings in his Offico upon my said application, which copy
has been tiled herewith, and is to bo taken us part hereof.

“/. And thereupon X pray that tho court do roviso and rovorso said
decision, to tho end that’ justice may bo done in tho promises.

2. This petition shall bo tiled in tho clerk’s offico of this gourt; and as
soon as tho petitioner 1ms made tho deposit required by law at tho com¬
mencement of suits in this court, or said deposit has been dispensed with,
tho clerk shall enter tho ease in a docket to bo provided by him for tho
purpose, and in which a brief of said tiling and of all subsequent pro¬
ceedings in tho ease shall bo entered ns and when tlioy successively occur,
down to and including tho ilnnl decision.

3. The clerk shall provide a mimite-book of his office, in which he
shall record every order, rule, judgment, or dccreo of tho court in each
case, in tho order of timo in which snid proceedings occur ; nud of this
book there shall bp two alphabetical indexes, one showing the name
of tho party applying for tho patent, nnd tho other designating tho in¬
vention by its subject-matter or name.

■X. The cases in tlio docket of causes shall bo successively numbered
from No. 1 onward, and each case shall also bo designated by tho num¬
ber nssigned to it on tho records of the Patent Office.

5. This docket shall bo called for tiio trial of tho cases thereon on
tho first day ot each session of this court in general term, provided tho
petition lias been Hied ten days before tho commcncomciit of tho term.

0. Tho opinions of tho court, when written, shall bo kept by the clerk
in tho order of their delivery and in a temporary book-ffie, indexed ; and
when so ninny have been delivered ns will make a volunio of convenient
sizo lie shall cause them to bo bound.

7. Tlie clerk shall famish to any applicant a copy of any paper in any
of said appeals on payment of tho lawful Tees.

8. Hearings of said nppenls shall bo subject to tho rules of tho court
provided for other causes therein.

0. When the testimony of tho Commissioner, or of any examiner,
touching tho principles of invention in question shall bo deemed ncccs
sary, it shall bo taken orally in opuu court, unless otherwise ordered by
tho court. And, in sacli enso, tho court mny order it to be reduced to
writing', and tiled or entered on its minutes, if it think, proper.

10. Tho ilnnl judgment or ordor of tho court skull not recite any of tho
facts mndo to appear in tho caso, but shall bo to tho following effect:

: °®c0’ r«"‘l upon the te88timonyTthoX“nm^iro°r^f Patente,] fofono

It s I thereupon ordered and adjudged that tho [petition bo dis¬
missed] [Comiiiissionor do issue to the petitioner a patent,] [as prayed, 1
[granting the petitioner (so and so.)] J 1 y

“And that tho clerk of this court trnnsniit to tho Commissioner of
Patents a copy of this decree duly authenticated."

To tho Commissioner of Patents: :

• Your petitioner, A. B., of - - , county of - , and State of

- , represents that ho has, by grants duly recorded in tho United

Stntcs rntent Office, (liber -, p*. _,) become tho ownor of an exclusive
: right within nnd for tho several States of (Maine, New Hampshire,' nnd
.. "Vermont, ) to mnko, use, and- vend to others to bo used, a certain im¬
proved mechanical movement, for which letters patent of tho United

States were granted to 0. D. or - , in tho county of _ , and

Stato of - , April 1, 1809; that he has reason to beliove that,

through inadvertonco, accident, or mistake, tho specification and claim
of snid letters patent aro too broad, including that of which said
; pntciitco was not tho first inventor. Your petitioner, tkeroforo, hereby
" cutors his disclaimer to that part of tho claim in said specification which
is in tho following words, to wit:

“ 1 also claim the sleeves A B, having each a friction cam, 0, and con¬
nected, respectively, by means of chains or cords K L nnd M N, with an
oscillatory lever, to operate substantially as herein shown nnd described.”

The potitiou of A. B., of - , in tho county of - , and Stato of

- , respectfully represents :

That lie has mado certain improvements m velocipedes, nnd tlint ho
is now engaged in making experiments for tho pnrposo of perfecting tho
i snino, preparatory to applying for lotlers patent therefor. Uo therefore
: prays that tho subjoined description of his invention may bo fifed ns a
caveat in tho confidential archives of tho Patent Offico.

I v - • A. B.

, SjicciJication.

Tho following is a description of my newly-invented velocipede, wliiok
• ''•» ns full, clear, and exact as I am nblo at this time to give, rcforonce
v being had to tho drawing hereto annexed.

This invoution relates to that olass of velocipedes in which tlioro nro
two wheols connected by a beam forming a saddle for the ridor, tbo foot
boing applied to cranks that rorolvo tbo front wheel.

Tbo object of uiy invoution is to render it unnecessary to turn tbo
front wheel so much ns heretofore, and at the same time to fnoiiitnto the
taming of sharp curves. This I accomplish by iltting the front nud the
kiud wheols on vertical pivots, and connecting them by menus of a
diagonal bar, ns shown in tbo drawing, so Hint tlio tinning of the front
wheel also turns tho bnok wheel with a position at an angle with the
beams, thoroby enabling it easily to turn a curvo.

In tho drawing, A is tho front wheel, B tho hind wheel, and' 0 tho
standards extending from tho nxio of tiio front wheel to tho vertical
pivot a in tho beam b, and D is tho cross-bar upon tho end of a by

r [Tlio form of oatli will be substantially that provided for original ap¬
plications, except that, ns a caveat can only bo tiled by a citizen, or an
alien who has resided for one year last past in tho United Stntes, nud
made oath of lus intention to become a citizen, tho oath ibould bo
modified accordingly,]

38. Op an undivided fractional interest in an invention be-

POKE THE ISSUE OP LETTERS PATENT.

In consideration of ono dollar, to me paid by O. D„ of' _ I do

t r T-iea t0,saitl °- D- nn m,dividc<1 talfof -H my right
itle, and interest m and to a certain invention in plows, as fully set
forth and described in tho specification which I havo prepared fif tho

ST10" 1,118 bee“ nIr°‘l<ly mnd°’ Say “ and flIcd”J preparatory to oh-
taming letters patent of tho United States therefor: And I do hereby
U‘'l0riZ0 aud ^"cst tho Commissioner of Patents toissno tho said
letters patent jointly to myself and tho said 0. D., our heirs nud assigns.
Witness my hand this 10th day of February, 1808.

39. Op THE ENTIRE INTEREST IN LETTERS PATENT.

In consideration of flvo hundred dollars, to mo paid by 0 D of
——,1 do hereby sell aud assign to tho said 0. D. nil my right, title,
f"d‘ C‘f !“ alld tl;° *ettors lmt°nt of tho United States No. -11800
for an improvement iu locomotivo head-lights, grouted to me July 30,

trey ns tho same would have been Md anfen ’ i?'^ aad ea’
assignment and sale had not boon niado * d J y°d by mo if tWa
i WitUCSS ,ny l,a,ld «><s 10th day of Juno, 1809.

4‘ A.B.

‘10. Op AN UNDIVIDED INTEREST IV tup Trm,n.m

SION THEREOF AND

In cousidoration of one thons-imi ,i„u„„„ .

- - > I do horoby soli and assign to tho said 0° n'm br °;-D.'’,of

fourth part of all inV right tin- i • f 8a«‘ 0. D. ono undivided
patent of tho United States No lots'- tv, ltclcst 1,1 aml to tho letters
: stoves, granted to mo Jh, - 10 “s ^thn In ‘ ""TT™*'"' cooki“S-

a* . . ^ "ouM luvvo been hold and oiijoycd bv mo if

this assignment and salo had not been made U J J 11,0 lf

Witness my hand (Ids 7th day of January, 1809.

A. B.

i ' •«. Exclusive territorial grant by an assignee.

V In consideration of ono thousand dollars, to me paid by O. D„ of
77-“, 1 d0 l,eroby em,,t aml convoy to the said 0. D. tbo cxclusivo

right to uinko, use, and vend within tho Stato or - and in no other

place or places, the improvement in coru-planters for which letters
patont ol the United States, dated August lo, 1S07, were granted to
E. F., anil by said K. F. assigned to 1110 Docomber 3, 1S07, by an assign-
mont duly recorded in liber X“, p. -110, of tho records of tho Patent
Ofilce, tho snmo to bo held and onjnycd by tbo said 0. D. as fully and
entirely ns tho sumo w-ould have' been hold and onjoyed by 1110 if this
grant had not been made.

Witness my baud this 10th day of Unroll, 1808.

A. B.

42. License— siiop-RionT.

; In cousidoration of fifty dollars to bo paid by tho firm or S. J. & Co.,

- i I do horoby lieonso ami empower tbo said S. J. & Co. to

manufacture, at a singlo foundory and muoltiuo shop in said - , nud

. I® 110 other place or places, tbo improvement in cottou-secd planters for
; whicli lottors patent of tbo United Stntes No. 71840 wore grnuted to mo
, November 13, 1808, aud to sell tho machines so iimnul'neturod through*
out tho United States, to tho lull cud of tho term for wliioh said letters
j patent nro granted.

; Witness my hpnd this 22d day of April, 1809.

43. LICENSE— NOT EXCLUSIVE— WITH ROYALTY.

This ngi'ooinont, mndo this 12tli (lay of Soptomber, 1808. between A. B.
party of the first part, and 0. D. & Oo., party of' tho second jmrt. wit
ncssoth, that, wliereas letters patent of the United States for nil ini-
provemontin horse-rnhes woro granted to the party of the first part,
dated October 4, 1807 ; and wliereas the party of the second part is do-
sirous of manufacturing horse-rakes containing said patented improve¬
ment: now, therefore, tho parties hnvo agreed as follows:

I. The party of tho first part hereby liconses and empowers the party
or the second part to manufacture, subject to tho conditions hereinafter

named, at their factory in - , and in no other place or places, to the

end of the term for which said letters pntont were granted, horse-rakes
containing tho patented improvements, and to soli tho same within tho
United States. '

II. The party of tho second part agrees to mako fiill and truo returns
to tlie party of tho first part, under oath, upon the first days of July and
January in each year, of all liorso-rnkcs containing tho patented improve¬
ments manufactured by them.

III. Tho party of tho second part agrees to pay to tho party of tho first
part live dollars, ns a hcenso-fec upon ovory horse-rake manufactured bv
said party of tho second pnrt containing tho patented improvements":
provided, that if tho said feo bo paid upon the days provided heroin for
semi-annual returns, or within ten days thereafter, a discount of fifty
per cent, shall bo made from said feo for prompt; payment.

IV. Upon a failure of the party of tho second part to make returns

or tl . 110 1M‘J n,eut of liconso-fees, as heroin provided, for thirty days

a.tcr tho days herein named, the party of tho first part may terminate
this license by serving a written notice upon tho party -or tho second
pait; but the party of tho second part shall not tlioraby bo disclaimed
ironi any liability to tho party of tho first part for nny liconso-fees duo
at tuo time ol the service of said notice.

In witness whereof tho parties nbovo named (tho said Uniontown
Agi {cultural Works, by its president) hnvo lierounto sot tlioir hands tho
day and year first abovo written.

A. B.

0. D. & 00.

-W. Transfer op a trade-mark.

We, A. B. and a D., of — — , partners under tho firm-name of B. &

., consideration of flvo hundred dollars to us paid by J3. J?„ or tho
° 1,e™1>y assign, and transfer to tho said E.P.nnd

Stoves IwiiT r?/ t0 US0 iB th0 amiinfaeturo and sale of
stot es a certain trade-mark for stoves deposited by us in tho United
States Patent Office, and recorded, therein July 15, 1870; tho sni'no to bo
Hold, enjoyed, and used by tho said 0. F., as fully and entirely as tho

sanio would have been held and enjoyed bv ns ir
made. J 1 “ UJ 118 “tins grnnt had not boon

Witness our hands this 20th day of July, i8y(li

45. Statement and account.

In tho matter of the application of a u „r.,

To tho Commissioner of Patents-

“ . . .

=Mra,Ta\-E3i,'ss

wns <'teslnL°S>Tt‘anS; bUt,’ t"’° yCIU'S aft0I'vnrtl> tl10 establish., lent
was destroyed by tire, without ju s, . ranee. In the exposure at the
5? ° eont, itted i 1 c so I cl co fined I to tie lo c
for three years, when lie died, leaving applicant, his executrix auil
widow, with a large family and small means. Nevertheless, applicant
made every effort to induce manufacturers to uso tho improvement

aim at lust succeeded in inducing tho firm of 0. T. .<fc Co., of _

to rcconimeiiCfc tho inniiufiictiire of the machines. But alter four years
tho firm failed, being largely in debt to applicant for royalties. After
, this it beenmo impossible for applicant to do anything with tho iiivcu-
;• tion. She wrote to various manufacturers, anil mndo personal appli-
; cation to others, but found them unwilling to innko arrangements to
Pay royalties, or to use tho invention in any way, unless sho would sell
too patent, including tho extension, for a nominal sum. Sho states, how-
: over, dint she has at length succeeded in perfecting nil agreement with

; G. H. & Oo., of - , conditioned upon tho extension, whereby tho

! “'d flrl“ agreed to manufacture tho pntonted machines, nud to pay her
l n ro-V«lty of throe dollars upon cncli ono mndo. Aside from tho interest
; so vested in G. H. & Co., tho entire interest in tho oxtonsion remains
j -Tested in her, and sho has made no assignment, contract, or agreement
of any kind for tho sulo or assignment of the extended term to any per-
son whatsoever.

The following is bcliovcd to bo a corrcot statement of recoipts aud
' expenditures, nud is as full ns it is posslblo to mako it:

Receipt*.

Fiom proilfs from busiaoss, (for particulars or which soo

Schedule A) . $1,230 00

From royalties from E. T. & Oo., (for details of which sco

Schedule B) . . . 2, 341 00

From sale of shop-right to L. 51 . 230 00

Total receipts'. . 3,827 00

Expenditure*.

Exponso of procuring patent . 200 00

Net receipts . . • . 3,077 00

Tlio invention is exceedingly useful, as will ho abundantly proved.
Tho testimony will show that it lias been introduced upon 20,000 mow¬
ing-machines, and has increased tho value or said inacliincs not less
than throo dollars each. It is ovidont, thcreforo, that tho public have
, *JCCQ greatly bonedted by tho uso of this invention j wliilo the fact that
0. D. invested his entire tiino and means, uud llnnlly lost his lifo in tho
prosecution of his invention, is respectfully ottered ns proof thnt ho 1ms
not been, adequately remunerated for his time, ingenuity, and oxpenso
bestowed upon this invention, and tho introduction thereof into use,

) Respectfully submitted.

A. B., Executrix.

[Hero fullmvH oath. Sco Form S5.]

40. Reasons of opposition to an extension, (by individuals.)
Iu tho ma tter of tho application of A. B. for an exteution of letters pat-
1855 ^ 1"lprovomonts in B®wiug-machiucs, No. 12213, dated May 15,

To the Commissioner of Patents:

Wo wish to oppose tho application above referred to, for tho following
reasons, viz : °

First. Applicant was not tho original nnd lirst invontor of tho im¬
provement claimed by him iu said letters patent, tho snmo having been
^ully described iu tho English patent No. 27, or tho your 1853.

» ~ ">• •W-*

PnlrH, Sa\ d i1,.ivo“ti1°" i8,not v,dmblc '»»<> important to tho public.
fTAmn-f -^PPi'cunt has been adequately remunerated tor his tiino, in-
gonuitj.and expense m originating nnd perfecting liis alleged inven-

dne dnieonc° in bis ^

Sixth. Applicnut has assigned to mi,„
teiuion , nnd tho monaiM1, fr ^^*^5**“ oU ‘“‘enaf In tUn <a.

r, .t7ss&a«-*®asa i recorded Juno 2, 1804,

a true atatomonUH^ do notpresont

DEPOSITIONS.

d7. Notiob of taking testimony.

• t Boston, Massachusetts, March 29 lsao

1 q„, V- ’ "lg heforo tho Ooininissioncr of Patents.

- tho onico vr“ y "rci ‘hat 0,1 Wednesday, March 31, I860, at
. no oWm-b M M V '1'’ 'r ° Court8tl*ct, Boston, Massachusetts at
' ■ "dock n tho forenoon, I shall proceed to take tho testimony of G
H J. 1C., and Ii. M., all of Boston, as witnesses in my behalf.

^reh“Z!,imr T1" <i°"ti,lno from day to day until completed. You
attend nml cross-oxiimino.

t A.B.,

I - , Providence, Rhode Island. ** * Q'’ AUom!>-

Proof oj service.

State of - , County of - , ss:

Personally appeared before mo, a justico of tho peace, tho above-named
... ’ wl,0» be,"S d'dy sworn, deposes ami says that ho served tho abovo
I "P011 °- r-i tlio attornoy of tho said O. D., at ono o’clock p. m. of

I tho oOtli day of March, 1809, by leaving a copy at his olllco in Provi-
I •; Hence, Rhodo Island, iu clmrge of his pnrtnor, It. S.

a A.B.

Sworn to and subscribed before mo this 31st day of March, 1809.

E. F.

• (Sorvico may bo acknowledged by tlio party upon whom it is made ns
follows:

. Sorvico of tho abovo notice acknowledged.

O.D.,

By E. F., his Attorney.)

-18. FOUM OF DEPOSITION.

• Before tlio Commissioner of Patents, in tlio iiuittor of tho interference
' hetwcon tho application of A. B., for a paper-collar machine, nml tho
Bettors Patent No. 85038, granted Decombor 15, 1808, to O. D.

Depositions of witnesses examined on bolmlf of A. B., pursuant to
annexed notice, nt the oflleo of E. F., No. 30 Court street, Bos
Mnssneliusotts, on Wednesday, March 31, 1809. Present, S. T., i
on bolmlf of A. B,, and V. W., esq., on bolmlf of 0. D.

G.H. (1.

G. H., being duly sworn, (or nfllrmcd,) doth depose and say, in am
to interrogatories proposed to him by S. T., esq., counsel for A. B
follows, to wit:

Question 1. What is your name, ago, residence, and occupation?
Answer 1. My name is G. H.; I mil forty-threo years of ago; X n
manufacturer of paper collars, and rcsiilo in Ohclsen, Mnssnehusotb
Question 2, &c. * • • • • • • • •

And in answer to eross-iu torrogntorics proposed to him by Y. W., <
counsel for 0. D., ho snitli :

, Cross-question 1. How long have you known A. B.?

Answer 1.

G. I

49. Certificate of officer.

(To follow deposition.)

State op - , i

County of - , j ss;

At Boston, in said county, oil the 31st day of March, A. D. 18G9, bol
mo personally appeared the above-named G.-H., and mndo oath that
foregoing deposition, by him subscribed, contains tho truth, the wli
truth, and nothing but the truth. The said deposition is taken at
request of A. B., nt the time and plnco mimed in tlio notice hereto
tnclied, to bo used upon the hearing of nil interference between
claims of. the said A. B. and those of C. D., boforc the Commission©
Patents, on the 3d day of May, A. D. 1SG9.

Tho said 0. D. was duly notified, ns appoars by the original noti
horoto annexed, and attended by V. W., esq., his counsel.

E. P.,

Justice of tho Peace

Tho magistrate shall then append to tho deposition tho notico uni
which it was taken, shall seal up tho testimony and direct it to tho Oc
missioucr of Patents, placing upon tho envelope a certificate in si
stance ns follows : ’

I horoby certify that the within deposition of G. H., [if tho packs
contains more than ono deposition, give alt the names,] relating to I
matter of interference botwcon A. B. and 0. D., was taken, sealed i
April11' a'd^MO tU° °0,amiSSi0n0r 0f Pntouts «>o this 20th day
E.P.,

_ _ _ _____ _ _ Ju8lico of tho Peace,

EXPERIENCED IN LINE BUILDING

stntction of each section will he under the super-
Vilson II. Kairbank of Warren, Mass., who has
lines anil better lines than any other man in
and is thoroughly familiar with the territory,
ill five different installations from New York to

lepost Company
usiness over its standard line costing $ i . 373-
her of the older companies could handle ove
t costing them S7.h09.55 a mile,
nicnsely reduced cost of beginning busim

show itself in the Teleposl Company s balance
nnlv a very small volume of business is needed
rge dividends on this low construction cost.

would much rather have his corporation made
impregnable, his first earnings appearing in tin
value of his stock, than clamor for excessive div
mg the necessary period of establishment.

The foregoing policy will insure three things t
|xisl Company stockholders:

1. The establishing of the business
all parts of the country.

a. The rapid advance in market valui
because of the evidence of prosperity V
the Company.

i. The tmtinuota payment of large

THE BEST, BUT NOT CONTENT
The Teleposl Company is formed to transmit
messages hv the quickest and cheapest method:
by science or invention, and its purpose is to pre

TELEPOST DIVIDEND POUCY

PERPETUITY

New ex-

plained uO^e Company's desanbttve pamphlet. , gWfilflf W®

TholftxKRIilNQ-. DEBENTURE : CORPORATIONhMi opened a Sub-
Bcription JIqj tlie flrat iMtalliiient dtHIie fnlly-pidd'Caj)ilal Stook'‘o£ the. TELE-
POST Cfbii^ANY,. at pto, 810 a share. , ,

The llOotripany- will.'oonfine: thiSvfirstiisBue to.ionunjnount,', sufficient to

iihistettUhe extension outrank lilies, the

: ^s^®aa^i,S3as^5Ss»asaaaa?5s&i^S3s^s

widely a j y possiblfehas :-been * adopted’,'’ not ' only* that ; the >greatestnumbep or * co-

SSJ^&gjyjBSS

1,0 one ipdrsbn ; \ liutfsUbiilCa’jKfe^ stock ^

1 00 foundll^visable, tho subscribers to the present issue- will each hayo a right
to Bubscr; |b^ i^ro -rath, to: the now issue before any offer: is mode to the general
piiblic, feprding? to-the policy of • well-managed banks: in; favoring their
• «lgiruil fefi if

schemes is the Hoard of Trustees

I by the independent oil-
leir successful attempt to

of their invention. energy. patience and capital ;
they willing to subject the great enterprise for

It having been legally determined that the Votii
of Trustees is a |M>sitive protection of sound btisi
terprise and a guarantee to shareholders, the
Company perfected its organization in that w
securing to its stockholders the permanent ov
management and protit-enjoymenl of the public e
in which they are engaged.

somewhat different motive— that the Telepost Company
will never be sold out, merged, reorganized, leased
or otherwise controlled, or its business in any way
menaced by outside speculators :

i. The Inventor of the Delany System of R»|»h1
A mom.u ic Telegraphy ami his associates.

3. The public, who not o i 1 * ” * c C “ 1 “

The First Interest : Mr. Delany. who lias given the
best work of his life to his Rapid System, and the K. H.
Sellers Co., who for many years have liccn associated with
hint and have financed the undertaking during the neces¬
sary and costly period of experiment, development and
r di/i g I not propose lobe deprived of the fruits

defend and protect. This policy negmx .

-"SctrsKs:

. . -

ppeal of Edison and Haering-[
ton from the decision of tho)
Commissioner of Patents, off
March 20th, 1870, to tho Hon. I
tho Seohetaiiy op the In-1

Argument (or Mr. Prcst-oM.

I’he first qnostion upon this proceeding (which in
^stance is nu appeal), rolatos to tho just limits of tho
31-otay s legal power over decisions of tho Oommis-
nor of Patents, on subjects clearly within tho Com¬
moners jurisdiction, and concerning which decis-
Mal<e/e0^10U '8 miu^°’ 0XCeP^ ho hns committed

Hie Commissioner of Patonts exorcises judicial funo-
is upon questions of a special oharnotor; and tho
tuto gives au appoal to tho courts of law for tho
reotion of every error which ho may commit. For
jrs suoh ns are hore allogod, a peouliar and most
mcious remedy by notion is givon by B. S., § 4916,

“§4916. Whenever a patent on application' is re-
“ fused, either by the commissioner of patents or' by
“ the Supreme Court of the Distriot 'of- Columbia,
“upon appeal from the commissioner, the -applicant'
“may have remedy by bill in equity, and. the 'court
“ having cognizance thereof, on notice to adverse
“parties, and other duo proceedings had; may ad-
“ judge that such applicant is entitled, according to
“ law, to receive a patent for his invention as specified
“ in his olaim, or for any part thereof, as the faots in
“ the oaso may appear, and such adjudication, if it be
“ in favor of the right of the applicant, sliall-authorize
“ the commissioner to issue suoli patent on the appli-
“ oant filing in tho Patent Office a copy of the adjudi-
“ cation and otherwise complying with the require-
" ments of law. In all cases where there is no oppos-
" ing party, a copy of the bill shall be served on the
“ commissioner, and nil the expenses of the proceed-
“ ing shall be paid by the applicant whether the final
“ dooision is in his favor or not.”

At the same time certain powers over the the Patent
Office are givon to the Seorotnry of tho Interior by R.
S.,§§441, 481, ns follows:

“ § 441. Tho Secretary of the Interior is charged
“ with tho supervision of publio business relating to
“ tho following subjoots. * * *

“ Fifth. — Patents for inventions. * * *

“ § 481. The commissioner of patents, under tho di-
“ rcotion of tho Secretary of tho Interior, shall super-
“ intond or perform all duties respecting the granting
“ and issuing of patouts directed by law ; and he shall
“have cliurgo of all books, records, papers, models,
“ nmchinos aud othor things belonging to the Patont
“ Offico.” ... - ..

The snmo titlo, by an oxpross variation, gives tb the'
Secretary tho samo power of supervision ovo'r mar¬

shals and. others as over tho Commissioner of Patents,
with tho spoqial addition of appelluto powor.

; .“ The Secretary of tho Interior shall oxorciso super¬
visory and appollnto powor in relation to the acts of
‘.‘ marshals, &o,” (R. S., 448). •

;! The Oommisbionor of Patents has tho powor (denied
to.all other heads of bureaus in this department,) to
frame; his own regulations for submission to the ap¬
proval of tho Secretary.

We have only to add that tho Commissioner allows
and countersigns, and tho Secretary signs, letters patont;
and wo have all tho provisions of law characterizing
tho relation of the Commissioner to his superior officor

It is oloar, from this exemplification of tho statutes,
that the Seoretary acquires his powor ovor tho decisions
of tho Commissioner, not by any grant of appollato jur¬
isdiction, but from the roquiremont that bis signature
shall be presont to make a valid patont ; and from the
co-ordinato enpnoity in him to frustrnto*tho Commis¬
sioner’s dooision by witholding that signature.

This power to prevent is of tho greatest importance
to honest administration ; and is always roposod somo-
whero in a government of distributed powers. It is
generally a more powor to stay, and not .a power to re¬
vise or correot. It is tho last repository of tho
sovereign discretion touohing a sovoroign grant, and is
exorcised on the wholo innttor, without roforouoo to
details, by a simplo assent, or refusal of asseut. To
enquire or deoido whether there has boon error, is to
desoond to details, and to oxoroiso appollnto jurisdic¬
tion. It is the propor function of this discretion to de¬
termine whether tho prior judgmout was 'upon a sub¬
ject, competent to be considered by tho tribunal or offi¬
cer making tho decision. In England this powor is (in
respeot : to . patents,) exoroised by the lord olinncollor
as keeper of tho consoiencb of tho king and oustodian
of. the groat seal. In tho United States it is oxeroised
by the Seoretary of the Intorior. In England tho grant

Of a monopoly is of tho sovereign graco, and may be
refused arbitrarily (15 and 1C Viet., Oh. 83, § 1C). ; But
no such power of rofnsal by prerogative right, or in
other words, without reason, exists by law in this
country. In England tho highest judicial olfieor of tho
realm is charged with tho duty of nffixing tho groat
seal to patents for which warrants have boon issued by
the law officer (tho Attorney- General) who 1ms examin¬
ed tho case ; and yet though ho certainly must bo ro-
rcgnrdod as tho most compotout logal authority tb con¬
sider appeals, aud although, unlike the case of' the Sec¬
retary of the Interior, appellate jurisdiction is expressly
given to him (soo statuto horoinaftor cited), it will bo
seou, by tho authorities horonftor oited, that ho novor
oxoroisos that jurisdiction to ovorrulo tho subordinate
law officer, wlioii ho has acted within his powers.

In Vincent’s appeal, li, L. R., Oh. App., 341, tho Lord
Chancellor said : . .

“ It would bo making a dangorous precodont to allow
“ an appoal from tho law officer of tho crown, unless
“ a caso bo inndo of surprise or fraud, or unless somo
“ material fact which, if brought boforo tho law officer,
“ would probably have led him to decido difforontly,
" has subsequently come to tho knowledge of tho party
“ appealing. I do not think that such an appoal ought
“ to bo allowed on the ground that somo fact, whioh
“ wns within tho knowlodgo of tho appollant at tho time,
“ was not brought boforo tho law officer. j

“ In tho present caso, tho party opposing rolies on
“ public user of tho invention, but tho applicant raises
“ tho point that such usor took placo in consequonco
“ of a fraud which, under 15 and 15 Viot., oh. 83, § 10,
“ would destroy tho oflbct of tho usor. This is a quCS-
“ tion' of faot, whioh ought to bo tried by a jury on
“ viva-voce ovidouco, and, if I wore to refuse to allow.
“ tho patent to be soalod, I should bo precluding Vin-
“ oent from tho opportunity of having it so tried'." v '

The English statute under whioh such proceedings
lire taken is the 16 and 16 Viot., oh. 83, ns follows :

“ § 7. Every application for letters patent, made
“ under this not, shall bo referred by the commissioners,'
“ according to suoli regulations ns they may think fit
“ to make, to one of tho law officers.

“ § 16. It shall bo lawful for suoli law olfieor, nfter
■" suoh hearing, if any, as ho may think fit, to oause a
“ warrant to bo made for tho sealing of lottors patent
“ for the said invention, and suoh warrant shall bo
“ sealed with tho seal of tho commissioners, and shall
“ sot forth tho tenor and oll'cet of the lottors patent
“ tlioroby authorized to bo granted, and snob law olfieor
“ shall diroot tho insertion in suoh lottors patont of all
“ suoh restrictions, conditions and provisions ns he may
“ deem usual and oxpodiont in suoh grants, or neces-
“ sary, in pursuance of the provisions of this aot, and
“ the said warrant shall be tho warrant for tho making
“ and. sealing of lottors patent under thra not, aocord-
“ to the tenor of tho said, warrant. Provided always
“ that the lord chancellor shall and may have and
" oxorciso suoh powers, authority and discretion in ro-
“ spoct to tho said warrant, and tho lottors patont
“ therein directed to bo wndo undor this aot, ns ho now
“ has, and might now oxorciso with respect to tho wnr-
“ rant for tho issue undor tho groat soal of lottors pat-
“ out for any invention, aud in rospoot to tho making
“ and issuing of such lottors patont.”

- “ 16. Providod nlso that nothing lioroiu contained
“ shall oxtond to nbridgo or affect tho prorogativo of
“ tho orown in relation to tho granting or withholding
“ tho grant of any lottors patent.”

In nnothor oaso it was said :

“ If partios having full knowledge of tho faots, aud
I' taking thoir own courso in tboir manner of using
" the materials within their -knowlodgo, either do not

“ raise bofore the attorney general a particular argu-
“ ment upon tho foots, or do not bring forward all tbe
“ ovidonco bearing on those facts and then at their
“ command, they, in my judgment, are not entitled to
“ tho iudulgouco of having the matter remitted book to
“ tho attoruoy-gonoral, nor have they any right to oull
“ upon . tho lord chancellor to discharge, in that re-
“ spoot, tho oflico of tho nttornoy-gonoral.”

Ax parte Sheffield, Law Reports, 7
Ohancory Appoals, 239-240.

' Tlio king, having power by act of Parliament to grant
letters patent undor tho groat sonl from time to time,
for theatrical exhibitions, granted a pntent to tho peti¬
tioner for a regular thoatro. A subsequent patent for
a oirous having boon passed by tho lord privy seal,
tho first patentee opposed tho sealing of tho potent for
tho cirous by tin} chancellor.

Lord Chancellor (Lifford) “ An application may bo
“ mado to tho groat seal if the grant be illegal, or if
“ tho crown bo imposed on or deceived. In suoh
“ cases the olmncellor will. withhold the seal. Li this
“ case, as to tho matter of discretion, whether the
“ crown ought or not to grant suoh n pntent, I have
“ nothing to do witli that. Tho single question hero is
“ whothor thoso exhibitions of Astley are the subject of
" a patent within the act.’’

“ 4. * * It is said that I ought, as keopor of tho
“ king s conscience to withhold tho great sonl. But
“ tho granting of this patent has been considered by the
“ lord lieutenant ; so I do not think that I havo any-
“ thing to do with that. If, indood, tho patent wore il-
“ legal, it would bo othorwiso. I can’t withold tho
“ great Bonl.”

Jlxjmrtc Daly, Vornon & Soriven’s Rop ,
.602, 604.

(Irish Chancery R.), A. D. 1788.

Tho same principles have govornod the oxoroiso of

this kind of executive discretion in this country and it is
interesting to observe that our courts, and tho Attorney
General of tho United States, in. discussing tho ques¬
tion hero, have, without being referred to these English
authorities, adopted tho same rulo. Indeod, it is clear
that any other rulo would bo dostructivo of tho system
of dividod responsibility and power which prevails hero,
and in Groat Britain.

Mr. "Wirt said (Atty. Gcu. Op., vol. 1, p. 493) : “ In
“ a government purely of laws, no officer should bo por-
“ mittod to stretch his authority, and carry tho inllu-
- “ once of his office beyond tho cirolo which tho posi •
“ tive law of tho land has drawn around him.”

Mr. Hoar said (13 Opinions, p. 28,-9) : “ Tho
“ patent laws having mado ample provision for revising
« the decisions of tho Commissioner in propor cases,
“ by tbe judiciary, and the Execntivo having no appel-
“ late power over questions arising thorounder, tho party
“ should bo loft to pursue tho mode of robot there pro-
“ vided,” concluding that “ tho President should not
“ interfere with the rules and directions promulgated
“ by the Commissioner of Patents concerning proceed-
“ ings in his bureau for tho extension of patonts.”

Tho supervisory power of tho Secretary, in cases of
an original grant of a patent, is not greater or less than
in oases of an extension undor L. 183G, § 12, or L. 1848,
oh. 47, § 1. In tho easo of an extension allowed by tlio
Commissioner it is sottled that his decision is final in
tho absenco of fraud aud auy excess of jurisdiction.

Story, J., said : ’

“ It may bo laid down ns a gouoral rule that where
“ a particular authority is'confidod to a public officer,
« to bo oxoroisod by him in his discretion upon an ex-
. “ animation of facts of which ho is mado tho appro¬
priate ju’dgo, his deoisiou upon theso facts is, in tho
“ absence of any controlling provisions, absolutely
“ conolusivo as to tho oxistouco of thoso facts.

“My opinion therefore is that tho grant of tlio
“ present amended pntont is conclusive as to tho ex-

" istenqo of all the faots whioh were bylaw necessary-
“ t.o entitle him to. issue it j at least, unless it was ap- .
“ apparent on the very face of tho patent itself, with? ]
“ out any auxiliary evidence, thnt lie was guilty of a
“ olear oxcoss of authority, or thnt tho patent was pro- '
“ oured by d fraud between him and the patentee,

“ which is not pretended in the prosont oase.”

Allen v. Blunt, 3 Stoiy E., 745.

“ The act of the Oomuiissionor in extending letters
“ patent; is oonelusivo ovidouoo of all the faots whioh .
“ he is required to find- in ordor to grant such exton-
“ sion, in tho absence of fraud and any excess of juris-
“ diotion.”

Oliiin v. Brower, 2 Onrtis 0. Ot. B., 50G,
Hoad-noto.

So, in the ease of a pro-omption claim, disallowed
by tho register aud receiver, under § 3 of tho Act of
May 29th, 1830, which, unlike the subsequent Act of
September 4, 1841, § 10, contained no oxpross provi¬
sion for an appeal to the Soorotary of the Treasury.

Legnro, A. G., said :

“Tho case * * is simply one of a pre¬

emption claim, disallowed by the oflicors, wholmd com¬
petent authority to judge of its validity on grounds
satisfactory to them, that it was unfounded. * *

This judgmont I think right. But right or wrong is
not tho question. Tho law gave them the authority
to docido tho caso, aud they lmvo done so. Tho, do-'
partmont, in my opinion, ought to acquiosco in that
judgmont, ns in every point of viow conclusive against ’
tho olaim ” 3 Op. GGG, GG7.

In a similar caso Attoruoy-Gonoral Butler gave his
opinion that “ when legal ovidoneo is onco offored to
“ S>Q register and receiver it is their oxclusivo prov-
“ iuco to judge of its weight and force,” (3 Opinion,

In the subsequent oaso of an application for a patent
by tho nssigneo of n land warrant, whioh was issued by
tlio Commissioner of Pensions, on depositions alioged
to bo false ; Secretary Stuart said : “I will not pretend
“ to say that oases may not arise in whioh it would be
“ tho duty of tho Department, or of tho President, to
“ forbid tlio issue of the patent. Whore tlioro was any
“ collusion botwoon tho officers and tho warrantees, or
“ when the warrant was in tlio hands of a party to the
“ fraud, tlioro would be no doubt of tlio duty of tlio
“ Department, or of tho President, to arrest tlio issue
“ of tho patent. iiio mattor is ono of oxooutivo disoro-.
“ tion, iu my judgment, and it ought to bo exercised
“ in such a way as to do substantial justice.”

1 Lostor Land Laws, G13.

“ An appeal doos not lio to tho President, from the
“ decision of tho heads of tho difibront executive de-
“ partmonts. This has been settled both by judicial
“ decisions, aud by tho practice of tho government.
“ Tho truth is, such an appollate jurisdiction would
“ rondor it impossible for tho President to discharge
“his high duties to tlio country, aud would resolve his
" oifico into a tribunal to ho ir and determine private
“ claims in tho last resort.”

President Buchanan, 1 Lostor Land Laws,
G81.

It is cloarly dedueihlo from thosu authorities that
tlioro oxist iu this country and in' England cortaiu
principles of bureaucratio government applicable to this
caso, to disregard which would soon throw tho whole
systom of departmental administration into confusion,
bosidcs opening tho door for worso.

The gonornl principle is —

Tho superior administrative olficor, whoso aot or
sigunturo is requisite to comploto tho declaration of a
judicial judgment by Ins subordiuuto, 1ms a duty to
geo that his subordinate has acted within his jurisdio-

tion, and a corresponding duty to withhold his approval
from aots dono beyond that jurisdiotion or fraudulently, .
and to yield that approval -whore such jurisdiction: has
not boon oxcoodod, and tho subordinate has aoted
honestly.

The special applications (appropriate to this oaso)
of this rule for offioinl conduot are :

1. Where tho not done is the formation by tho Com¬
missioner of Patents of a judicial judgmont upon a legal
question necessary to bo dotorminod by him, tho Sec¬
retary of tho Interior will not, in this country, enquire
into tho correctness of that judgmont, but only into
the regularity of the application to himself. He will
refuse to reviso the judgmont upon points of law or faot
involved in the original judgment, because appellate juris¬
diction, has boen given on such questions to tbe courts
of law and -has not been given to him. \

2. The requirement that ho shall sign all patents is
intended to soparate official functions, and to increase
tho safeguards against collusive or fraudulent judg¬
ments, in relation to patents. It oroates a practical
veto power, to bo exorcised in oaso of fraud; or excess

of jurisdiction, by tho Commissioner of Patents _ as,

for instance, if ho should issuo, or endeavor to obtain
(by virluo of the Secretary’s signature), a patont for
lands, under tho guiso of lottors patent for an invention,
or Should send to the Secretary a patont for some con¬
trivance of a uaturo not within, but without, the law
or the statutes.

3. The _ statutory provision, giving tho Secretary
“supervision” over tho public business relating to
patents for inventions (R. S., Ill), and that requiring
the Commissioner of Patonts, uiulor tho direction of
the, Score tary of tho Interior, to suporiutoud and per¬
form all duties “ respecting tho granting and issuing of
patents directed by law," givo no powor of intervention
bythoSecretftrj-into the aot of adjudication by the Conn

missioner. The duties to be performed by him are all
• directed by law." Among those duties is to allow, and
issue, and roissue patents in cortuiu cases to assignees.
This makes it tho duty of the Commissioner sometimes
to dotormino questions of titlo, or disputes us to assign¬
ments. Not only doos tho law put upon the Commis¬
sioner, and on him alone, tho performance of this duty of
docisiou, but tho duty is, by its nature, incapable of
boing directed or controlled, oxcopt by appeal ; and
such appeal is expressly given, in terms broad enough '
to cover the case of every invoiitor failing in his appli¬
cation, by 11. K. 4,015. It is possible, howovor, that
tho Commissioner inuy be direatod, as to tho oxternal
formalities touching tho general conduct of his business,
and bo compcllod, in si ort, if necessary, to proooed with
tho discharge of his duties. The language of Attorney
General Wirt (1 Op., 020), is precisely applionblo :

“ Ho (tho Prosidout,) is not to porform tho duty, but
“ to soo that tho officor assigned by law porforms his
“ duty faithfully— that is honestly : not with perfect cor-
“ redness of judgment, but honestly.”

It not being pretended that the question decided by
the Commissioner was not one proper and necessary to
bo passed on by him, and it not being pretended that
lie has acted with fraud or collusion, it is respectfully
submitted that tho Secretary of tho Interior is not only
without jurisdiction to consider whether tho Commis¬
sioner h is erred judicially, but that to withhold his
signature, upon any investigation or opinion of his own,
in a caso whore tho jurisdiction of tho Commis¬
sioner is manifest, and bis act, within liis authority,
and not . challenged for bad faith, would bo vio¬
lently subvorsivo of tho truo ordor of . public busi¬
ness. Tho question now involved is a siinplo- ques¬
tion undor a branch of tho law whieli all lawyers
understand. But if it is once established thnt tho Suero¬
tary will, on appeal, enquire to soo whothor tho dooisions
of tho Commissioner of Patents aro orrouoous, (even

though it bo also understood that he will not i-ovorso,
oxoopt whoro his mind is entirely elonrupon theoi-ror,)
hisufficowill bo called on to ontortain an nppontin
every interference, or other disputed case. As was said
by the Attorney-General (1 Opinions, . G29), all tho
diitios of his subordinate will “ bo accumulated upon
him in the last resort and, unless ho is versed in
patent law, ho will, ns is reported to have boon said
by Mr. Secretary Browning, in ordor to the right
performance of this duty, be required “ to spoml days
and nights in learning patent law.”

In discussing a technical quostion of jurisdiction,
there is no plnce for argument upon rnorits; but
it is proper to call tho attention of tho Secretary
to the fuct that Mr. Prescott is not within the
benefit of B. S. 4915, on tho grouud that no patent
has been refused to him by the Commissioner (if not
on other grounds), while Mr. Edison is, as tho inventor,
arid the failing party, within tho romody of that stat¬
ute, upon all its conditions. A refusal, thorofoi-o, to
sign the letters patent' allowed (and no otliors call bo '
signed), is to rob tho judgment of the Commissioner of
ull its value to tho successful party,- and yet to shut
him out from all romedy. A similar consideration is
referred to in Vincent's Appeal ns boiug itself sufficient
ground for not withholding the executive approval.

Comploto copies of tho printed points .upon the
luoiits of tile controversy between tho parties, us sub¬
mitted to tho Commissioner of Pntonts, nro horowith
submitted, and a copy of tho decision of tho secretary
upon tho oral argument on tho 15th of April is horoto
annexed. *

•Boscop. CoNiama,

GnosvENon Pon-rmi Lowbey,

Of Counsel for Mr. Piiescott.

<a?'

SEORETARY Df.LANO’s’ DECISION. '

It is tho priiotieo of tho department to sign without
inquiry all patents that lire sont up from thd. Patout
Oflico with tlio signature of tho Comriiissionor at¬
tached boforo tlioy aro presontod. As far us I know;
it has boon tho prnctico of tho oflico from timo im¬
memorial. I cannot say to tho timo whoroof tho
memory of man runuuth not to the contrary; ,fco.; My
memory only dates back to tho day of -'Secretary
Ewing. Tho records of tho department; as Inis been
woll assorted by tho counsol, show, that applications to
tho Seci'clury to withhold his signature to those
pntonts have boon very rare, if one has ovor lieon
made. Novortholoss; I am vory clearly ' of tho
opinion that wliou my attention is called to the
facts of a case, mid my judgmont is that a patent .
should not bo issued, it would bo my duty
to withhold my signature from tho pulout. But I
think good practice requires that my opinion should
rest upon tho enso ns prosonted to tho Commissioner :
and thoroforo I should not bo inclined, I think, nndor
uny circumstances, to direct tho introduction of othor
avidouco than that which was boforo tho Commissioner. :
Cortaiuly in this case, at this stage of it, I should bo
unwilling to givo an ordor for tho taking of testimony
for its continuance, ns tho counsel upon ouo sido of tho
enso linvo asked. Now, ns to whotlior in my judgmont
I shall or shall not doom it my duty upon tho cuso, ns
it is boforo mo, to sign or withhold my signature from '
tho patent, ! shall oxpress no opinion. It will; per¬
haps, bo timo onougli to oxpross an opinion when tho
papors nro prosonted to mo for signature ; but if tho
couusol will rest tho caso upon its prosout nrgumont,
wliou I reach it by the presentation of tho putout,Iwill
deeido it. If thoy wish to argue that quostion further
at an onrly day, I will hoar it, if they agroo upon tho
timo. So that virtually, if I rnnko mysolf understood,

I doolino to grant oitlior of tho motions that have boon

submitted to-day— either to dismiss the oaso or con¬
tinue it and nllov.' additional testimony to be taken
in it. 1 recognize the faot that to the Commissioner is
entrusted, in the first instance, the duty of examining
and dooiding upon nil questions that arise before him
in his office and are presented to him ; but X am un¬
able to bring my mind to.the conclusion that it would be
my duty to sign a patent beoauso in his best judgment
he had direoted it to bo issued, if I, on the evidence
iu the ease as presented to me, should be of the opin¬
ion that his conclusions wore dearly and distinctly er¬
roneous. X do not say any thing about what I should'
do in a doubtful case. I do not desire to express any
opinion at present in any other torms than tlioso I

QUADRUPLEX CASE VOLUME 70 - CONTENTS

Atlantic and Pacific Telegraph Company v. George B. Prescott, Western
Union Telegraph Company. Lemuel W. Serrell and Thomas A. Edison.
Superior Court of the City of New York.

1. Amended Bill of Complaint. May 21, 1877.

2. Answer of George B. Prescott. May 13, 1876.

3. Answer of Thomas A. Edison. 1876. (Bound out of order between

pages 736-737 of Plaintiff's Testimony but filmed in its proper
sequence.)

4. Answer of Western Union Telegraph Company. May 28, 1877.

5. Answer of George B. Prescott to the Amended Complaint.

May 28, 1877.

6. Plaintiff's Exhibits I through Z.3.

7. Testimony for Plaintiff.

List of Witnesses:

George D'Infreville
Thomas A. Edison
Chase B. Harrington
Josiah C. Reiff
Giovanni P. Morosini
Henry van Hoevenberg
Edward H. Johnson

8. Plaintiff's Testimony in Rebuttal and Exhibits put in on Cross-
Examination of Defendants' Witnesses.

Exhibits Z.4 through Z.8.

Plaintiff's Rebuttal Witnesses:

William D. Hennen
Hiram Barney
Thomas A. Edison
Joseph T. Murray
Zenas F. Wilber
George D'Infreville
Ellis Spear (affidavit)

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[SUPERIOR COURT,

OF THE CITY OF NEW-TORK.

OE B. Prescott, The West- f
f Union Telegraph Com- l
or, Lemuel W. Serrell and }
ojias A. Edison. .. ,

; Tlio plaintiff respectfully shows to this c

First. The plaintiff is a corporation, duly incorpo¬
rated under the laws of the State of New- York, for
tlio purpose, among other tilings, of constructing and
operating lines of telegraph within the United States,
and of acquiring such property ns shall be necessary
or proper for that purpose, and it is now and has for
many years, been engaged ini the business of opera¬
ting telegraph lines within the United States. ^

Second. The defendant,. The Western Union Tele- .;
n-apli Company, is a- corporation incorporated under
said laws and for the same purpose, and :lins its
principal office in the City of Now-York.

1 Third. On the first day of October, 1870, the de¬
fendant, Edison, made and , entered into a contract
with one George Harrington, of which! a copy is an¬
nexed hereto and made part of this complaint, mark¬
ed A.

Fourth. In pursuance of said agreement^as- this
plaintiff is informed nnd believes, 'the said Harring-

ton advanced large sums of money to said Edison;
amounting to over forty tliousnnd dollars, in con¬
sideration of which, and the more fully to fulfil;
and carry out the said agreement, the said Edison,’;
on the fourth day of April, 1871, executed and de¬
livered to said Harrington a power of attorney and
assignment, of which a copy is annexed, marked B.

Fifth. At the timo of tho execution of such power I
of attorney, which was duly recorded in tlio united
States Patent Oflico May 0, 1871, tlio defendant,' ]
Edison, as this plaintiff is informed and believes, had \
arranged in his mind tlio process and means, the com;.' '
binntion, powers and machinery embodied in tlio npv
plicntions hereinafter mentioned, and liad developed.
them so far that lie was confident of ultimate suc¬
cess, and pursued his investigations and experiments
with the assistance of said Harrington, with energy :
nnd industry, and in a shop in Newark, equipped and
furnished at said Harrington’s expense.

Sixth. On or about tlio first day of January, 1875, '
the said George Harrington, on his own behalf; and'
as attorney for the said Edison, executed and deliv*.
erect to Jay Gould tlio deed of assignment; bearings
date that day, of which a copy is annexed hereto,
marked C. ; and on the ninth day of March, 1875, ho
executed and delivered to said Gould tlio deed
of assignment, of which a copy is nnnexed, .marked
D., both of winch' were recorded in tho United States
l atent Office March 31, 1875; and the said Gould

.. W<^ hy Ed^om W CXUCUii°n "“incd ",l|

so °-' tho Io“,rth d"y ot January, 1875, tlio-;
thon^d ToliLCP"8nTUon ot tho sum of thirty
Gould <li,1 v ’ tWl"0ll \VI13 l»,id him by said,
.wil l oxeont« nna deliver to said Gould tlio.-

SSSBSW*

On the sixth day of January, A'. D. 1875, the said
Edison, by the said Jay Gould, Ills attorney, in con¬
sideration ot the said sum of thirty thousand dollars
so to him paid, as aforesaid, did execute nnd deliver
to Samuel M. Mills, of tlio City of Brooklyn, an
assignment in writing under seal, whereby ho as¬
signed and transferred to the said Mills nil tlio right, 9
title and interest- ot said Edison, .in nnd to the appli¬
cations hereinafter mentioned, .and in and to all in-
vi.-tilious and improvements relating in any way to
Duplex and Quadrupled Telegraphs, and in any
Letters Patent for any such inventions or improve¬
ments.

On the eleventh day of January, A. D. 1875, tlio
said Mills, by an instrument in writing under his
band and seal, assigned nnd transferred to this plain¬
tiff, in consideration of the sum of thirty thousand
dollars to him in hand paid by tins plaintiff, all his
l ight, title nnd interest in and to said inventions and
improvements, and in tlio applications for tlie same,
and.the Letters-Putent that might be issued therefor.

Eighth. Ou or about the 19th day of July, 1875,
the said Jay Gould executed mid delivered to this
plaintiff, for a valuable consideration, an assignment
of all liis interest in Duplex and Qimdruplex Patents
-or applications for patents relating to Duplex or
•Quadruplex Telegraphy, which assignment was, on
tho eleventh dny of April, 1870, tiled for record in -
the United States Patent Office. None of the in- 10
ventions therein described -nnd none of those de- ■
.scribed in the applications hereinafter mentioned
■ were made ;for the gold and stock company, Du¬
plex and Quadrupled Telegraphs, . so called, are a
mode of telegraphy by which electrio oiirrents can bo
transmitted in the same directions and in the opposite
-directions at tlie same time, over the same wire ; nnd
•tlio number of messages which in a given time can be

transmitted over the snmo wire is thus more than
doubled, nnd the speed with which messages received
for transmission can bo transmitted is in like manner
and to the same extent more than doubled.

The system of duplex and quadruples telegraphy
is, and has been sinco 1870, therefore properly called,
and is, in fact, a system of fast telegraphy, and is
especially adapted to bo used in connection with, nnd
is, in fact, applicable to the automatic system of tele¬
graphy. This plaintiff is informed nnd believes, that
the inventions and improvements mentioned and
described in the applications hereinafter specified,
are useful and valuable additions to the automatic-
system of telegraphy, nnd to the instruments nnd
machinery, constructed by the said Edison, for the-
purpose of developing the same into practical use ;
and the said inventions are adapted for the purpose
of successfully and economically developing the said
automatic system of telegraphy into practical use,
and are applicable to the same, and to mechanical.

Ninth. On the nineteenth day of August, 1874, the
snid Edison executed seven applications for Letters
Patent of the United States of America, for certain
improvements in duplex telegraphs, which said ap¬
plications were dated that day, and were numbered,

respectively, 94, 95, 90, 97, 98, 00, 100, and the samo-
were thereupon tiled in the United States Patent
Office. And the said Edison, ns this plaintiff is in¬
formed nnd believes, at the same time complied in all
respects with the provisions of the law in such case-
made nnd provided. This plaintiff is informed nnd
believes, that on the 14th day of December, 1874, tlie-
snid Edison executed an application for Letters
Patent of the United States, for a certain improve¬
ment in duplex telegraphs, which application was-
numbered 112. On the 24th day of February, 1870,

lie executed an application for Letters Patent of the
United States for an improvement in qundruplex
telegraphs, which application was numbered 113.
The said last mentioned applications were filed,
shortly after their dates, in the United States Patent
Office.

And the said Edison, at the same time, complied
in all respects with the provisions of the law in such
case made nnd provided.

Tenth. On the nineteenth day of August, 1874, the
defendant, Edison, in violation of his agreement with
the said Harrington, hereinbefore averred, and with¬
out his consent, executed nnd delivered to the de¬
fendant, Prescott, an agreement, of which a copy is
annexed, , marked F.

Eleventh. The said Commissioner of Patents, after
receiving said applications, proceeded to consider the
same, and determined that the said Edison was the
first inventor of the improvements therein described,
and that the same were new and useful, and that
letters patent of the United States should be issued
for the said improvements, nnd each nnd every of
them.

Twelfth. On the 23d day of January, 1875, the
said Edison did present to the Commissioner of Pat¬
ents a letter signed by him, in which, recognising the
inference of the Commissioner of Patents that he had,
according to the forms of law, requested that letters
patent should issue to himself and Prescott, lie re¬
voked the request that letters patent of the United
States should issue to himself and the said Prescott,
nnd'recitinghis prior agreement with said Harrington,
requested that letters patent of the United States, for
the improvements mentioned- in said application,
should issue to himself and said Harrington. The
. snid Harrington, at the same time, presented to the
said Commissioner a petition, in which lie averred

tlio said assignment, bearing date April 4, 1871, and
prayed for the issue of letters patent to himself and
Edison, as the said Edison had requested in his said
16 letter. Copies of said letter and petition are annexed
hereto, and marked G. and II. respectively.

Thirteenth.. The said Commissioner did (hereupon
determine that the legal title to said applications,
numbered 04, OS, 00, 07, 08, 00, 100, and the im¬
provements described therein, was in the said
Prescott and Edison, and that he had no power to
take testimony in respect to, or to examine in any
way into the equitable title to the said improvements,
and the qnestion of title thereto must be determined
by the courts. And lie directed Hint letters patent of '
tile United States should issue to the said Prescott and ■
Edison for the said several improvements. And the
said Prescott claims that letters patent tor the inven-

16 tions and improvements described in all of said
applications should be issued, and is urging the said
Commissioner of Patents to issue the same, and the
same will be issued and delivered to tlio said
Prescott and Edison unless prevented by the in¬
junction of this honorable court. The issuing of the
said letters patent to them would work irreparable
injury to this plaintiff, and one which could not be
compensated in damages. It is impossible to de¬
termine in money the value of said improvements;

but the same are of great vnlue, and materially
facilitate and expedite the transmission of tele¬
graphic messages. If such letters patent for the

17 said improvements are issued to said Prescott and
Edison, they will have the record titlo thereto, and
may dispose of the same to a bona tide purchaser
for value, unless prevented by injunction. And
although by the terms of the said alleged assignment
of Edison to Prescott, .which the Commissioner of

[Patents has assumed to consider an application by
-jildison that said letters patent shall issue to. Pres-
Bcott and Edison— one of said parties cannot dispose 18
§|of any interest therein without the written consent
Hof the other— and other conditions are named, yet
fftho said conditions cannot be introduced into letters
{patent, and will not appear.on the face thereof.

‘i The defendant, Serrell, is the attorney of record
for the said Edison and Prescottin the snid several ap-
Iplica tions to the snid Patent Ollice, andisproseouting
ft ho same for them ; and in the ordinary course of
{business in snid office, . the said patents, when issued, 10
Twill be delivered to him, and all correspondence with
said office in relation thereto takes place with him.

Fourteenth. Tho plaintiff further avers, upon in¬
formation and belief, that snid agreement between
the defendants, Edison and Prescott, was executed
under the advice of the counsel for said Prescott,

•who was also the counsel for the Western Union
Telegraph Company, that the agreement aforesaid
between him and said Harrington did not include
duplex and quadruplex telegraphy, lhe snicL Mar- ^
rincton was then absent, and the said Edison was

mi3ed by such erroneous advice into executing the
said agreement between him and Prescott. It was
made without any valuable consideration whatever,
anil tlio said Prescott lias not, nor has any one paid
to said Edison any money or other value whatever
on account thereof. The same was made upon the
faith of promises made by said Prescott that lie
would assist the said Edison to develop tho said in-
volitions, and introduce the same, and sell tlie same
for a sum or price in some degree commensurate with
their value, and also upon the terms and conditions
in said agreement set forth. But tlio said. Prescott,,
who was then and has ever since been electrician of
the Western Union Telegraph Company, did not in
good faith carry out and perform, the suid promises,
terms and conditions, but fraudulently, and with the
intent and design to benefit his employer, tlio West¬
ern Union Telegraph Compnny, to tho detriment and
injury of said. Edison, and to compel him to join a
(with said' Prescott in executing a conveyance to tho
Isaid. Company for a small and totally inadequate'
[consideration, did wilfully violate tlio said promises,

*• and conditions in. tho following particulars:

" _ | _

!• He did not furnish tlio said Edison any money
or assistance of any kind in and nbout developing
tlio said inventions and introducing and soiling tho
saino oxcopt as hereinafter stated.

2. Ho did pay tlio fees required by l;nv upon filing
the said applications, and did, in tlio fail of 187-i,
assist the said Edison to obtain tlio use of some of tile
wiros and machinery of the Western Union Telegraph
Company for tlio purpose of experimenting with the,
8aui m volitions and improvements ; but as soon as
tlio machines embodying tho same proved successful,
ho allowed and undertook to license tho Westorn
Smpv0 loSrap|1 Company witliout tlio consent of
saul Edison to uso tlio same, and they linvo ever
s ice been used by said Company to its great profit
and ad vantage, without the payiiient.of any consul-
co!,se!!t lt'1Ver l° 0,0 saill^son. «nd without his'

with th«T-n U"{ si,id Eaiaon' >“ tllu fall -of 1874, was/;
not ifimr^ knowledge and consent of said Prescott, no-
1,11 tll“ said last mentioned Company for?:
describe,/?., » PiF Sllld1.lml?10'’cments and inventions
noTnromotn Tin/ apP1(,catl0'1?. lll« said Prescott did?
the contr?, •? I*!01 aafalat “! .8aid »o?otiations, but on
ari ft n l ? ' combined witfi tlio President of
to iink,?1/’ 7 '0.!vaa actil‘g 011 its bclialf, to ref, iso
to uwico any dohnito olTor to said Edison nnd tn

tious U!iil tiio ^Imn decisi°11 ul)ou saidnegotia:

S: , U,, “.!ould bo Educed by the

pilce f ° 80,1 sald m',L‘i‘tions fora nominal

thoklSwtedl^nW'^ 0ldared;?f sold Edison (witli

negotlntfons immtf pl'om,8ed to complete tlio said;
that purpose Tlnf/mi m®8 to put *dm hi funds for
and incurred liabilities hull011 SpanU11 ot said moiioy;
of seven Csan d dollars ,to oxto,l

tlui facts herc4nbe?ota°vetd nTMU lm°'vi'4
end- connivance of said $

6aid negotiations, in tlio expectntion and belief that
lie would be .thereby compelled to accede to term!
for tlio sale of said improvements much below theft
real value.

and authorizing tho said last mentioned Company to
manufacture other machines embodying tlio said im¬
provements, and assisted and directed in and nbout 28
the said manufacture, and tlio said Company 1ms
actually manufactured, or caused to be manu¬
factured, many machines embodying tiie said im¬
provements, and is now using the sumo witliout tlio
consent of said Edison, mid witliout paying him any
compensation therefor, and to the great profit and
advantage of said Company.

Fifteenth. Thereupon tlio said Edison, ns lie law¬
fully might, elected to rescind tlio said agreement
witli Prescott, and exeouted tlio instrument aforesaid, 20
marked G., and caused tlio sumo to be forthwith
filed in the United States Patent Office, together with
the said petition, marked H.

Sixteenth. The defendants, Prescott and tlio West-
ern.Union Telegraph Company, lmd notice prior to
Julyl, 1874j.of the agreements aforesaid between 1
said Harrington -and tiie defendant, Edison. Tile
last mentioned Company now claims to be (lie owner (j
of tlio inventions and improvements mentioned in - '

said applications, by virtue of some alleged agree- L30
meat between itself and the said Prescott and Edi¬
son, tlio precise nature of which is unknown to this
plaintiff. But tho said Company never closed or
consummated the said alleged agreement until after
the said agreement with said Prescott was rescinded
ns aforesaid, nor until after the snid instruments
marked G. and H. were filed in tho United States
Patent Office, tior was the same made with tlio con¬
sent of tiie snid Harrington, or tho said Gould or this
plaintiff, nor did this plnintiff know or suspect tho 31
same until after tho first day of February, 1870 ; nnd
this plaintiff is informed and believes, that neither
snid Gould nor snid Harrington knew of the same until
: after said last mentioned day. • ‘

| i Seventeenth. The snjd Edison, immediately after

the rescission of said contract with Prescott as afore,
said, offered to return to him and to said Western
Union Telegraph Company all sums of money cx*'
pended by them respectively in pursuance of said
contract, or upon the faith thereof, but they and each
of them refused to receive the same or any mrt
• thereof. J ‘ *

1. That, the defendants, and each of them, and
SSt attorneys and agents, may be eujomed and re, •

‘•d dlV‘nS tll.0 pendency of this suit from pro-
nfflm? n “r ,lPPllcat}°!13 for letters patent, or any
of them, or from receiving letters patent upon any
meats tu .aPlJllcnt‘0»s. or for any of the improve-
ments therein described, or from selling, disposing
fcum ^.th0 same in any way, and that
mJ tmnsmn1 t°'t lem execute

twi, ns? • tll(3 sa,d Commissioner a request
sahl 1 i f f 0 g letters patent upon the
said applications, or any of them, until tho questions
as to tho title thereto be determined in this Action

2. That the said defendants, Prescott and The

further prosccutiL the sSl nn.^ 1 -,i8 court f,0ln
scribed therein f

to execute such^mfh^ b°

applications. , inventions described in said

• 5> T1’at th« Pontiff may have such other or fut- '

ther order or relief as may be just, together with the
costs of this action.

McDaniel, Lu.umis & Soutiiei:,

Plaintiff's Attorneys.

City and County of Nm- York, ss. :

Thomas T. Eckert, being duly sworn, says, that
lie is President of tile above named plaintiff ; that
ho has read tho foregoing complaint and knows tho
contents thereof, and that the same is true of his
own knowledge, except as to tho matters therein
stated on information and belief, and as to those
matters be believes it to be true.

Thos. T. Eokeiit.

Sworn to before me, this 11th 1

day of 2fcp3l, 1876. j

j-l.

ut/lio,
Kings Co.

10 cnpitnl to bo furnished by tho party of tho first
shall -consist of tho stock, machinery, tools and
itions owned wholly or in part by him, of which an
itory shall bo made, without reservation, but so much
o stock, machinery, tools and fixtures partly owned
. I1?!1? 'I'0 hrst part and in part owned by ono

lam Unger, as aro now located and in uso at the
er place ot business, at Number Fifteen Bnil-Uond
l,,e> Newark, Ncw-Jerscy, shall bo allowed to ro-
there for uso by tho parties hereto, and tho said
atn Unger, under tho linoxpired piirtnorship ns
ng at tins date bctwcon Edison, party of tho first
and tho said William Unger, but snid Bliop, ina-
J , tools and fixtures, known as No. 15 Bni'l-Rond
ue, shall not bo used ns a place of general inaiiu-
Ifnm.'f" ,°r< <irf ,0,tl'e de,rimt:llt of interests of'
....... f.._...,y to bu established and known as tho-

can Iclcurnpli Works,” under the auspices of
0 1 bo owned by the parties to this indentnro, it being
^ ‘l1111 tl‘o gcnoriil mnnuructiir^.:

T,?inCU"‘i 18 ,0 **“ transferred to tlio
a,. , I ^ "T"1.’ 1 "u,l<8> to lu established under this

!'° tnil|ster of the title to tho stock,:
tmrlhv tl n. n- UrCf *ln<1"lvu"tions owned wholly
'stand «!.?,! “f f'.L' f!r8t l,1,rt to tho parties of
■o, rations lo, bo ,lu,d them in

1 kirnislK.,! , i 1 •“ to tho amount of

cd s n , „ !“ ll,0TJ 8‘,'l'"l«ted. shall bo taken and
•plied by the^ party “of Urn ffipru" “npitnl ^

nd ift'ten'uo? tlra •' >ftrt 81,8,1 B'vo '»« whol^

ss , ' c 0 ' n :,"vo,,tivo P°",0r8 to tho
paities to .my di.-i.f nlld admit no

veutions or Lurov ., ‘"dlr,i,!,t i,,t<!re8t »> “»d t0

tcept as heroin na? ?'! I".lul° or *° ho made by
and belong to tho panief ol' 'll’ bJt *" s,lcl1 81,1,11
is above set forth L#h ■ ° 1 10 l,ret ""<• second. .;
' sixth of this indnninlo l'tPl)0,;tio" ns sot forth in
I'eiitinns uiiido oxclusivn’l ?rov.,dod> however. That
'»y,'vhicd,, nndcFa com „ra'it ,oGold n,,d Stock. ?
»t part and Hr. Marslmi'V ‘«t between snid parly ot ,
ty ol tho Gold and Stock^Con',!.8.."^' to,bo tbc 8°l0 i
°d in this Agreement Hutu not to bo

brst part binds liiniBolf uoM 8a.^Ediaon or party

parties whatever, without the consont of tho pnrty of tho
iccond pnrt hereto, any invention or improvement that
nay be useful or dcsiro'd in automatic telegraphy. And
irovided further, that for any original inventions or im¬
provements that tho party of tho first part may mnko
other than such ns mny bo suggested or nriso from the
current work in tho manufactory, there shall bo allowed!
and paid by the firm to the pnrty of tho first pnrt al
reasonable and proper compensation therefor, nccnrdingl
to its practical vuliie, all things considered. Such pay- 1 47
inont to be in addition to and irrespective of tho propor-l
tionate pnrt of the profits of tho business of tho firm to
which tho pnrty of the first part would bo otherwise on-
titled.

And it is further agreed, that if any disagreement
shall nriso ns to tho sum which mny bo claimed ns
11 reasonable and proper” to bo pnid for such original in¬
ventions, tho question shall be referred to an arbitrator,
or, if preferred by oitlior of tho parties, to three disinter¬
ested pnrtics, ono to bo chosen by each, and a third by tho 48
two thiiB chosen, and whoso decision shall bo final and
binding upon both.

Sixth. That all profits arising from the business of tho
firm, and from all inventions and improvements, and from
tho manufactory, shall be divided between tho parties ns
follows: One-third thereof to tho party of tho Hrst part,
and two-thirds to tho pnrty of tho second part ; nnd all
taxes, rents, insurance and other expenses, and all losses
or damages, if any such shall occur, shall bo paid from
tho general rccoipts of tho firm arising from its business: 40
if (hero shall be nienfiicioiit rccoipts, tho deficiency shall
bo supplied by the parties lioreto in tho ratio of ono-
third nnd two-thirds, or shall bo taken from tho cnpitnl of
the Company.

Seventh. Tho partners shall bo allowed and paid from
tho gross revenues arising from tho business a sum
oqunl to fifteen per cent, upon tho capital pel milium, to
bo divided into monthly payments, nnd a like per centum
on moneys advanced by either pnrty ovor nnd nliovo their
proportionate parts of tho capital as above 60t forth, and go
nil excess of profits shall remain in tho treasury el tho •
firm, to bo appropriated to tho enlargement of tho works
nnd manufactory, litid extension of the business as may
■from time to timo bo agreod upon. Otherwise than ns sut
forth in this section, there shall bo no moneys or property
belonging to tho firm withdrawn, taken or. uiod by eitiior
.partner oxcopt upon tho written consont of both partners.

Eighth. Tlio piirty of tlio first pnrt shall Imvo tlio 064-
trol and direction of tlio manufactory, niid shall employ

61 and dismiss (ill workmen, na lio slmll doom best for tlio-
interests of tlib firm ; sliall pnrclinso nt lowest cash prices
without commission, tlio machinery, tooln,- stock nnd otliet
necessaries required in tlio manufactory, lind generally
shall bo responsible for the careful preservation of the •
machinery and property of tlio' Company, and tlio ctS-
rforiiicnl conduct of tlio manufacturing part of tlio busi¬
ness. But tlio manner of keeping tlio accounts and boob- '

6f the firm rind manufactory, ana tho employment of p6f-
sons required in keeping such accounts and books, rind all

62 that relates to the financial affairs Of tlio firiu and bust
ness, nnd the disposition of tho proceeds of the ninnnfno-
tory, shall bo performed, or approved; controlled and
directed, St his option, by tlio party of tlio Sfcttrid part, .

Jfinth. TlieroBlinii bo lio notes given nor any liabilities,
created by any member of the firm without the previous
assent of both tho partners.

Before contracts shall be entered info for fhe iiiamifac- i
taro of any given number of articles, it shall bothedutyof
the parly of the iirst part carefully to estimate tho whole
amount of moneys that will lio required to fulfill such
com, act if made, and the length of time that will lie re¬
quired to produce the urticles wanted ; and such cstimafo
shall be submitted to the party of the second part in order-
la to "'r 'V 10 condition of tlio firm is such

“ J«st'fy tho outlay, and whether, when making tho .
conti uet, it should not bo provided iiisucli contract for -
nd anees te he made by tho parties for whom tho work. .
hefOTebeompTe,tio.,!,1'01>0rtl0'‘ 08 tl,c work progresses and.

Bi bvttM1 rr"* 6lm." 1)0 kcl,t of business doiio-"-
sales V , 11 ln,"E»e"uhsof pnrehasd, miinnliictiiro,

mcor’dld in .i,""d l"?'"'c!lt8 8111,11 ho clearly and fully
of whatever ,10' ' “ detllllcd nccoinit of all oxpcnscs

'counts shall «> ,,n '!•“ {■•■»*.■»< the books and u co¬
partner. « 1 mcs °>lcn fo ,l,° inspection ol either i;

66 big, Or in aiiv wisn „!?" ! . *=°> hmoiigmg to or concern- ■*;
bis ess * nffeet",g. said partnership or suidif

etof^auhe n'uinufll^uroofalhnn! rgrcod • ,,nd n"dol> < ■

re ot all machinery,- instruments,. :

neeessarv to developo inventions nnd improvements, ana

bo obtained by either of tho parties hereto, slinll bo mwiu- 66
Tactured, made nnd filled lit arid from the manufactory to
beset up, created of established under tins copartnership,
add at no tiilier place, slibp or nmnutactory, without tho
consent of all tlio parties to this indenture.

Thirteenth. It is further stipulated rind agreed; that
tlio party of tlio Becond pnrt may, at his own option, ad¬
mit a third party into the find iipon; terms ot equality
with him nnd’ with, the party of tlio hrst .part, tot is to
Cay : To iih cfjnril tl.irtl iim t or ul crest in all tlm mycm
tioiis, tittle, nnichittry, obis and rill othtt nwporty of the
firm till'd in tliri business, with oue-tlind eh.u o of.
fits and losses arising therefrom, and oi^\tJiud bcnLnt,
and an assumption of one-third of till the
firm. Provided, that by the admission ol such third party
tho interest of the said party of the Iirst part in tho P> *
petty mid business ol tbo hrm shall not be lessoned
thereby, nor tlio stipulations and agrco.ueiita uiia provi-
sions of this indenture changed or modified, except l so
far as most necessarily follow tho admission of a thud ^
....... not. ni)0„ nn cqiml footing in interest, nnd in aH othei

respects with all t?io rights and privileges, and subject to
aUPtho restricti0ns to be enjoyed' or asTmposcd upon the
parties to this indenture.

Fourteenth. This partnership shall continue f « P^f^C
or term of fivo years from tho iirst day, of Octoliei,, re
eighteen bnndrcd arid seventy, unless sooner dl88olvoj£g/^
by niutiml consent of rill the parties. £..Y

Fifteenth. At the expirntiori of tlio partrierthip; oi' on
its final dissolution, tlio property and

all liabilities of the firm Intimately created n thewarse W
of tho business; shall be divided among tlio' respcctno J
nart iers actofding to their respective interests ; and m
mri ri”v tto of the partners shall die before the expira¬
tion of the' partnership, tlio surviving partner Mpw»^
if thero shall bo mord than ono, shall account ioi ana
pay over to tlio executors', administrators or other jogpl
representatives of such deceased partner, >>>b Fopmrtion
of tlio moneys arid of tlio proceeds of all propeity and
assets owned by said partnership or firm.

CO ' Sixteenth . Tlio provisions of this indenture mny bo nil1
torod or modified, from time to time, upon tlio agreement
mid written consent of all pnrtios.

In witness wlioreof, tlio said Thomas A. Edison, and tlio
said Georgo Harrington Imvo lioroiuito sot thoir hands
nnd nfhxed thoir seals, in tlio City of Now-Fork, on tlio
day and date first above written.

George Uaiiihnoton, [seal.1
i „ Thomas A. Edison. [seai,.1 f

In presenco of 1 J

01 J. IV. Treadwell,

Ciias. S. Hiooinson.

Oity and County of jtfew-Tork, ss. : ■';$

this 31st day of Dccombor, 1870, before me nor- <
Edison i!l’!iTd Go0rgo IInrri"St0" nnd Thomas A. v:
to hn ihn ■ !"° l>or30llnlb' known, and known by ino
within irt«t,M .Vd,Vn 8 d?STbed in nnd "'ho exeentod tho
".othit’^'S,"^,^,^0™1^ neknowludgod to

Co c«*s..U. Kitchel, Notary Public,

m and for A cw- York City and County .

Exhibit B.

Thomas A. Edison a;

3 Gkoiioe Harrington.

Dated April 4,1871. ' '¥.

StaTo'S^&lf; °f. }h° City of Newark, ’ '
sidorntions, to mo in’hm 5,or '.u,n Vl,bd n,'d valimblo con- ,
tion of cortain civo m ,i d .n,,U *" Turthor qonsidera- &
J*y Goorgo San , to bo lulfillod,:|

inmbia, md sdpulato ndil^n^ » "'•P1011* Diatriet of Co-' «f
03 for tlio said Harrinotnn °°i 0 l,,VQ1|t nnd construot 0

I 3a 'nonts and machine! v th! r “"d complete sets of instrn- p.
t 1 "oinicnliy devolopo into hr.u !?" V B"c°°3sfiiUy mid eco- Z
' nyjtem of aiitom„tic orPf f .,,8° thoLittl® mother ;

subsequently to Im'wwo of tologrnphy, and ‘
,lflf nnd machinorr by aidim? th»' J10!*®®1 such instruments
f“‘: ‘or invonSasoSrto.f,,<>l.n tiln® to time such
nbility ns an, inventor and nt./*?-6-1011 d do,nnnd, mid my jfc
ponnit 5 nnd furthermore to^nSI*" "lisllt suggest nnd %
i w 1'ieparo, or eauso to bo pro- - 4

pnrod, tlio necessary descriptive paporB, tho models nnd
drawings' requisite nnd necessary to obtain patonts for all
ouch inventions nnd improvements, to bo tho joint pro¬
perty of the said Harrington and myself, nnd the pat¬
onts to bo issued to the said Harrington nhd myself in tlio
proportionate interest of two-thirds to snid Harrington
nnd oiio-third to myself, tlio whole to bo under the sole
control of snid Harrington, to be disposed of by him for
opr mutual benefit in the proportions hereinbefore re¬
cited, in such manner and to such extent nB he, the said
Harrington, should deem ndvisnble, with power to sell,
transfer nnd convoy tho wliolo or any part of tho rights
nnd titles in and to any or all of snid inventions nnd im¬
provements, as also of tho patent or other rights arising
therefrom; nnd tho Enid Harrington having faithfully
fulfilled all of tho covenants and stipulations entered into
by him : Now, therefore, be it known, that in considera¬
tion thereof, and of the sum of one dollar to mo in hand
paid, 1, Thomas A. Edison, of tho City of Newark, State
of New-Jei-6oy, do by these presents hereby assign, set
over and convey to him, tho said Harrington, two-thirds
in interest of all my snid inventions, including therein all
my inventions of mechanical or copying printers, and ol
all the patents fur all such inventions nnd printers,
whether alrcndy issued, applied fur or to ho hereafter ap¬
plied for, and of all and whatsoever of my inventions and
improvements inado or to be .made, and of all tho patents
that may be issued therefor, that lira or innv bo applies
ble to automatic tclogrnphy or mechnnical printers.

And whereas, I am desirous of obtaining tho co-opera¬
tion and assistance of tho snid Harrington in disposing
of my eaid one-third interest, ns before recited, and foi
tho purpose of united and harmonious action in nogo-
4 dating for its use or its solo and transfer by or to othorE
in conjunction with his own, and in such free and un
restricted manner ns will tend to success, and for the sum
of one dollar to me in hand paid, tlio receipt wlioreof ii
hereby acknowledged : Now, therefore, bo it known, that
I, Thomas A. Edison, of4 tho City of Newark, State o
Ncw-Jcrsoy, bavo constituted and appointed, and bj
tlioso presents do constitute and appoint Georgo Barring
ton, of the City of Washington; District of Columbia, mi
true, lawful and only attorney, irrevocable, with powo:
to substitute for mo and in my nnine. nnd in such mnnno
ns ho may tliiuk best, to sell, transfer and" convey all in;
rights, titles and interest in nnd to nny nnd all of my sail
inventions, and tho improvements thereto, whether mndi
or to bo inndo, mid to sell, transfer and convey all of m;

f o-y-v-'W

, 05

1| ►vAfWfuivJ

r x&ffitX..

'■ 07

} 08

rights, by patent or otherwise, arising therefrom, already
mndo and obtained, and all such ns may hereafter bo
nindo or obtained, and to oxccnto in full any or all neecs-
sary papers and documents requisite lor tho transfer of
title, and to invest in otlior parties full and legal owner¬
ship therein ; hereby divesting myself .of and investing
him, thb said Harrington, with all the powers necessary *
ill the premises tally and completely to carry out tho pur¬
poses and intentions heroin set forth, herohy fully coil-'
milling all that my said attorney may or shall do in tho'
premises, as fully „s if done by mo in person ; and re-
suclfnUornevlllllSSi°,10r °f P“tOI,U to re<!t>S»'8° liim ns
In witness whereof, I havo horennto sot my hand and

Ai H|d nhrl.iea ’ fn ‘ !° jity f Ne"'nrk- lottrth day of
Apni, oiglitcon hundred nud seven t)*-onc. J

In presence of T. A. Eo.son. Iseal.] ,

A. D. Comma,

A. B. Oandkk.

[50 cent Itov. . . .

U. S. Patent Offiok.

Libm.u:uS™

^ sen, of t„o

[official SUM,.] Samokl A. Uoxoan,

Admg Comm'r of /‘aienfs.

Exhibit C.

Gaonoa IIah, u noton to Jat Gould.

Dated January 1, 1875.

tpWl,1T“D.b^8TOl,Thnnlr0 bA°al",? dat0 tlto firstpf Oe- •:
Newark, State of New T 3 A< Wo Oily of
of tho City of Washington Disinter rfF f{nrr,inKton'.
copartners and joint omim? ! ' C,° llrablA' heeanio - ,

von tors, for a poriod of ii!!-1,?’ ns "innufaeturors and in- '
section of saidP indenture irnil ! ‘iJd wlJ°roas‘, tho filth ,

1 shall admit no oSr ?dci tl,n‘ ll>° said Edison
“ interest in nr l„ " . P!>rtlc!.to any direct or i.idirnnf .

“ shall admit no other partieaV^03 tlw,‘ 1,10 B‘,id Edisun
1 ii'torest in or tohnv itwaUr b° W diroct o'1 indirect ....
lo bo mndo bv him " eS8 °r 'mprovonients niado

and Edison in the proportions ns sot forth in section sixth
of said indenture: and whereas , tho sixth section of said
indonturo provides that tho proportions referred to in sec- 73
tion fifth shall bo onc-tliird to snid Edison, and two-thirds
to said Harrington, all of which will moro fully appear
by refcrouco to said indenture, a copy of which is hereto
-attached : and whereas , in furtherance of the provisions
?! 8ftid .'"denture, and tho purposes of said copartnership,
tho said 1 homes A. Edison, by an instrument- in writing,
benring date the fourth day of April, A. D. 1871, duly
recorded in tho “ U. S. Patent Ollieo, tho Oth of May,

’ 1871, in Libor U. 13, page 4 1 2, of Transfers of Patents,"
to which reference is made, duly sot forth tho fact of said 74
.joint ownership in his inventions in tho proportions of
one-third to said Edison and two-thirds to said Harring¬
ton, and did therein formally assign and sot over to said
Harrington nil undivided tivo-thirds of all his inventions
mndo or to bo made, and then and therein constitute and
appoint tho snid George Harrington his true, lawful and
only ntlorhoy irrevoeublo, with power to substitute for
him and in his nntno, nud in such innnnor ns tho said
Harrington may think best, to sell, transfer and convey
all of his rights, titles and interest in and to all of his 75
snid inventions, and tho improvements thereto, whether
nindp or to bo mndo, and to sell, transfer nud convoy all
ot Ins rights by patent or otherwise urising therefrom,
already made and obtained, and all such as may thereafter
bo made or obtained, and to execute in full any and all
the necessary papers and documents requisite for tho
transfer of title, * * etc., ns is moro fully set forth in
snid instrument of writing: and whereas, during tho pe¬
riod of 6nid copartnership and joint ownership, tho said
Edison mndo certain inventions for duplex and qundru- 70
plex transmissions of intelligence at tho same time upon
one nnd the same wire, known ns qnudrnplox telegraph,
for which applications for putunts have been imido and
. are to bo mndo : nud whereas, I, the said- Gcorgo Har¬
rington, in the exorciso of my beat judgment, and in fur¬
therance of what 1 deem the best interests of the said
Edison, ns well as of myself, having determined to dis-
peso of tho said duplex and qundruplox inventions of
suid Edison :

How, therefore, bo it known, that lor nnd in eonsidora- 77
tionof the sum of 0110 dollar, and of further valuable nnd
valid considerations to mo in hand ' paid, tho receipt
whereof is lioroby. acknowledged, I, tho said Gonrgo Bar- '
•rington, of tho City of Washington, District of CoTninbin,

Jinvo granted, bargained and sold, nnd by tlicso presents

do hereby grunt, bargain, sell, assign, transfer and c
voy Onto Jay Gould, of tlio City of Wew-York, State
Now-York, his executors, administrators and assigns,
said inventions of said Edison, known ns duplex s
juadruplex telegraphs, together with all the rights ti
ind interest therein nnd thereto of the said Thomas
itdison ns tho inventor thereof, and all tho rights, title a
merest of the said Thomas A. Edison and tho si
ocorgo Harrington ns tho assignees of suid Edison,
iitlicr of them, and all tho right, titlo nnd inteicst uli
hey or either ol them now have or may hereafter
[lure in or to any letters patent issued or allowed, or tl
nay hereafter he issued or allowed for any such invi
ions, whether made or to ho made, aa well ns to all i
irou’iucntstliat may hereafter he made, and in or to a
e-issuesorextensuinsof the same or any of them, tl

. i ,, reliitu to duplex and qiindriiplex tc

dinii^i i 1 m'° .,0 lo!' himself, his -cxeeiito

„l„ „r6,n,.?re i",, f°r his and their own use ill

ehoof ,o the lull end of. ho term, as well the rene
„,u"8 • “|,“,uf. for which letters patent ha

10 sum.. .I?., m 1 ter, '"-‘grunted, as fully and entirely

"lvV , Vr t"lll<l 1)11 and cnjoyi
|i8 H^miia" ^ t'"'1 1 J l,ir""pti>n, or either Of them. In
And f Il!!!„;,i“ . 11111 fV' not keen made,
id ,1K i , I. ,, '■’cul‘ge tJnrrmgton, acting lor mysol
Edison Ki J miornuy of said Tliotni

J Could uml",rizu '"id empower the sai

'lit ec ,,d' . “»<> "ssigns. ns a vest.

« «S, y p Edison for a

ever uiav L , “ri*''’tngs, models nnd whal

nta Can tRu United States pi

liether made Jj "'vuitmns and improvement
tmueiits as ,nnJc' lllltl (°r all such further ai

id Jay Gould m. "ems,,lT or requisite to vest in tl.

11 and eon )|!fto8,n|t<'C.",0ln "^"''listriitors or nssigm

oven, elite . & “ *? “I1 6,,ul1 inventions and hr
}' Gould, or eutli oihmt'iHl1"8 “"di •‘Pl'ointin^ tlicsnii
io, lawful and onlv rn,1 011 ,n8 1,0 n,n.V iiitncnlc, in;
substitute, ns I am. "revocable, with powo

writing of A ih" do intho instrmnen

5 myself and investiim'i^' ' l)l'foro r“oilod, divest

relates ii.jS *11!1' ‘ ■« said Jay Gould, in nl
>Ph» and tie mom JS/0 {|ul!,cx ai,d qnndrnplcx telo
if exercised byme h 'noJlI 11,0 R°«or in the premise,
Esioiicr of Pate,, . ,' ,1’“r“on* "'"j requesting the Com
0(1 attorney 0f said E(1I«°°"I60i 1,8 ,llu duly emieti

i-dison and Barrington in ull mat

-tors nnd inventions rotating to duplex and quadrnplox
telegraphy. Providod, nevorthless, that it is distinctly
understood, agreed and stipulated, that this disposition,
sale and assignment of dnplox nnd quadrnplox tolo-
griiphy, and this. deed of conveyance and transfor, does
not and shall not bo construed ito include any inventions
heretofore made, nor any patents heretofore issued or 83
allowed, nor any fiitiiro improvements thereof or thereto
for dnplox telegraphy in connection with chemical tele- vr
'.grnpliy ; but all -swell roirinin ns the property of said Har-
ringtou and Edison, hud under tho solo control of said lALuJ
Harrington, tho siuno ns if this sale, assignment and deed V T
of transfer 'had not boon made or executed. _ _ OfiVAXr

u In witness Whereof. I, the -said George Harrington, for .
myself and ns the duly constituted attorney of Thomas
A. Edison, have horounto set my Iintid and seal, ‘in the
Oity of Baltimore, Stnto pf Maryland, this first day of 84
.January, A. D. 187s.

Gno. IIakuinciton, [r.. s.]
for myself, and as the duly
constituted attorney of
Titos. A. Edison. ' [l. s;]

In presence of

Wn. P. Cox,
D. Doksey.

Geo. Haemnoton, ’[x..-8/J
' for mysolf and as tho
duly constituted attor¬
ney of

. Titos. A. Edison. [l. b.]

Received for record March 81st, 1876, and rccordod
in <Libor 0. ID, pngo 160, of Transfers of Patents.

'In itostimony whoroof, 1 lmvo caused the soul
■ of the 'Patent Office to bo horounto affixed.
[l. 8.1 iEdmb Spexu,

Acting Commissioner.

March 9, 1875.

A tlioiis.
tlie City Of Washington Dis,r lit’, |?,,rrin?t"''

87 myself, „„d ns tho liiilv V H Colninbin, noting
. A- Edison, did e^ci o n,1! ,- C'd nttor"7 °f Thou
•lie City, County n“d StnT«d rd^,ver % Could,
of assignment : Stl,,° °‘ Nc»--York, n certain di

“ qimdruplM" ", vus' u r.'tleu l“d', ";1,<|rovor the wo
fnrno by the words, ‘‘ di pl^1 p.“IcId. '° Precede t
duplex mid” wero n- ' l ’ V1"611 “id wort

Places referred to, „ “d ,he ,e ^ °",,t,e.d bT «"« i» tl
smd deed wns to convey all iu ? ?1 '!",d menningof tl
3 myselr ,,nd the snid & " a ('p •* “,l0 ft,,d ''"terest <
manner pertaining t ji' Edl6T. *° or in an
telegraphs : ° '|,itx 118 well ns quadruple

P Now ii hereafter, it is cy

said Geo.ye ' lt?in^u\',,t;'r/Vit''e66«,>h. 'hat I, tin

assw^^aar--"-!!?

"'."d paid °f ono dollar"'

ndmi„Lt, , i lk’ s,»to of v W Could, ol tho

tensions thereof, for which letters pntent lmvo been or
may hereafter bo granted, ns fully and entirely ns tho
sauio would linvc been or could bo held and enjoyed by
snjd Edison or said Harrington, or either of them, had
this assignment,' snlo nnd transfer not been made.

And J, tho 6nid George Unrrington, noting for myself
and ns the lawfully constituted attorney of snid Thomas
A. Edison, do hereby authorize nnd.cmpower the said Jny
Gould, his administrators nnd assigns, ns a vested right
conferred hereby, to call upon snid Edison for nil tho 92
necessary specifications, drawings, models nnd what¬
soever may be necessary to obtain United States patents
for nny ot snid inventions nnd improvements, whether
made or to be made, nnd for nil such further nssignments
ns mny bo necessary or requisite to vest in the snid Jnv
Gould, his executors, administrators or assigns, full anil
complete title to all such inventions and improvements,
hereby substituting nnd appointing the snid Jny Gould,
or such other person as he mny indicate, my true, lawful
nnd only nttornoy, irrevocable, with power lo substitute, 93
ns I am authorized to do in nnd by a certain instrument
in writing,' bearing date April 4th, A. D. 1871, mid exe¬
cuted nnd delivered by tho said Thomas A. Edison to me,
hereby divcBting myself nnd investing him, tho snid Jny
Gould, in all that relates nnd applies to duplex nnd qnnd-
ruplex telegraphs, nnd no more, with nil. tho power in tho
premises ns if exercised by mo in person, nnd requesting •
the Commissioner of Patents to recognise him ns the duly
constituted attorney of snid Edison and Harrington in nil
matters and. inventions relating to duplex nnd quadra- 94
plox telegraphy : Provided, nevertheless, tlint it is dis¬
tinctly understood, agreed nnd stipulated, tlint this dispo¬
sition, sulo nnd assignment of duplex nnd qnndruplox
telegraphy, nnd this deed of conveyance mid transfer, 'does
not and shall not bo construed to include nny inventions
heretofore mndo, nor any patents heretofore issued or nl- ,
lowed, nor any. future improvements thereof or thereto fllui
for duplex telcgrnphyj in connection with chemical tolc- ,
grapliy, but all such remain ob the property of said Hnr- jr\ 2/, A/ (7 Hr*, ^ n

rmgton and Edison, mid under tho solo control of snid j. _ *

Harrington, tho snmo as if this Bale, assignment mid deed A

of transfer had not been made or executed. . ***"

In witness whercoi; I. the said George Harrtnet
n.:,d..“Vl10 •*“«««•* attorney' oTlhou

Citj of iJiillii.ioro, State*:./ ' MnrylmS? thU “ini, day
Maicli, one thousand eight hundred and seven iy.Bva?

Guo. Haumkotok, ft..

For myself anil ast/iei/uly, constituted
_ . . Attorney of Thomas' A. Edison, .[t.

onsiderations l do herel.yacknowledgo, r do hereby give
md grant unto Jay Gould, of bho City, County and Stato

Ex’d. F. II. II.

If Jwwtryi, 1S75.

• Edison, rfirrM0?' that. whereas, I, Tliomai
'vented certain iinnrowmil! » of,Nu"'' Jersey, -have

Iplex toleKia|,,||1s,ltho0dcse|0i|l,Uo I,,,11'0? ""Provomeilts in

we been lodged with J \v o 0 8,,"11^ '"odela ot .which
'<1 State ol-JNew-Vork 'LSn ro11, ol;t|.e'Oity, Comity
neats : U,K> fur "bo purpose iof .ojjtuinii.g

'nthig\o°d°apii«nM:wId|i,,J,g0^!®r,0^0J,!c,',’|nprovoineals
' 11 "f which ' I am >akoiit » ''nP « telWvfor
.teat : 0,11 *° "mho npplicatio,,rfoiv)e!tors

0 rewipttrf.^hjJjJ'^'^°j|^®JJ,,r to me in .hand paid,
well. as other .good mnd.valuuUlo

if New- York', full and irrevocable power and authority
o sell, assign, transfer and set over unto any person, per-
ions or corporation any right, title and interest m or to
inv or nil of said inventions, or improvements relating
hereto, or in, to or under any letters patent which may
jo granted to, or at any time may belong to me, relating
o [inv or all of said Inventions or improvements. And 1 1W
lo hereby also give 'and grant to said Jay Gould full and
rrevocnblo power and authority to give or grant nay
iccnsc or licenses in, to or under any or all of said letters
patent, or in or relating to* any or ail of said inventions
ir improvements. . . r „

And I do hereby also give and grant unto said Jay

Gould full and irrevocable power and authority to do and

perform all necessary acts in and about tbo management
[>f my interest in said invention or .improvements ana let-
tors patent, nnd each of them, and in or relating to any u
business that may arise thereunder, hereby uutnorizmg
and empowering him to make and meet business engngc*
incuts and liabilities, and to do tuul pmorm each auci
every act which I or my executors, administrators « •

signs might or could do in relation to the iiiaiingemcut 01
all business transactions relating to said invention*-,
provements or letters patent, or any *>t them. .

And I hereby authorize and empower the said Gould to
demand, sue lor, collect, receive and gtvo acquittance and
relcnseB ill my nnmo or otherwise lor all sums ot n )■ 10.
debts and demnnds whatsoever which are or shall b .
owing or belonging to mo, or detained troni me by nay
person or persons, whomsoovor, and also «t - J A ,
.commence and prosecuta any and all suits or net
law or iu equity in my nnmo for the infringement of smd
letters patent, imd also to sign my nnmo to any
papers necessary for commencing and curry m go
suita or actions, aud ho shall lmve power, lull and inc-
vocablo, in my name, to do and poiforni overy act " 10!

eary and proper in and about said Bints and net' • ,

1 do also hereby autliorizo and empower the w g
Gould to appoint any substitute or substitutes / '1 , hereby
eretion, to do and perform all or any ot tbo acts y
authorized j and I 'do, in such ease, bcweby^co fc npou
sucli substitute or substitutes, each and a 1 “J 1 q 1 w or
which 1 lmvo horohy conferred upon mud Juy »

which mav hv him bo delegated to such substitute or

Articles of agreement, mnde and entered into this in?
nineteenth day of August, A. D. 1874, by and be-
tween .Thomas A. Edison, of Newark, in the State of
New-Jersey, and George B. Prescott, of the City and
State of New-York :

Witnessotli, Whereas, said Edison has invented
certain improvements iu duplex telegraphs, for which
lie has executed, or is about to execute applications
forletters patent of the United States, and such ap¬
plications are numbered 04, 05, 00, 07, 08, 00 and 100,
and are dated August 10, 1874,' and said Prescott is 108
entitled to an equal interest in the same and others
hereafter mentioned :

Therefore, in consideration of the premises, and
the sum of one dollnr in band paid* the receipt
whereof is hereby acknowledged, the said Edison lias
. sold and assigned, and does hereby set over and con¬
vey unto the said George B. Prescott one undivided
half part of the right, title and interest of every i
character, in, to and under and connected with each
and all the aforementioned inventions and letters iqo
patent on the same, when granted, and authorizes and /
requests the Commissioner of Patents to issue the
said letters patent to Thomas A. Edison and George
B. Prescott, as the assignees of snid Edison, for the
use and behoof of themselves and their legal repre¬
sentatives./

And whereas, the said Edison has also' invented
other improvements in duplex telegraphs, the descrip¬
tions of which have been lodged witii George M.
Phelps, for thepurpose of models being constructed, no
it is hereby agreed, that such inventions are included
in this present agreement, and that, wlieii the applica¬
tion for patents are made, the patents to bo granted
in accordance herewith, and that the snidEdison shall
sign the required paper therefor. .

This transfer isuiado on the following terms and
conditions, which are hereby niado part of the con¬
sideration in the promises :

First. That both of the parties shall have an equnl
undivided interest in all letters patent of the United iii
States, or of any foreign countries, which may be
granted for all or any of Bnid inventions, or of any

nm1UnllnPr°(VOnJe"ta tllm'oon raado, by either party
and of all extensions and re-issues of nSy such &

pended si wli*' r",“r Ti’ Elliso,‘ ll!ls iwnstoforo ex-

• ^9^JSS£gaS^*&3Si

patent for a„^«ft^&«c“n'W «f letters

113 th'ereto1 K.°l ZabLd of OrooUiLr 5^““ °"t

>a«n ,?us "or sSi ^ "'il1 Wm«If

right in any wav to , Smilt licenses, nor tlio
>'“e or self a ? of Z ° T !,a'V0 «'am.facture,
movements thereof „ d 'T'1"0113' or :L»y im-
artides cental, V ombodyimr, or

meats, or nrotorWi k.?^ &l1^ ^mjtions or improve-
without the written coiiwnMi °r 1<ittul'3 patent,

party. 11 C0"SBnt «rat obtained of the other

1W «£o? riSt01 tonL°,c» 5" sfliatj»ventions, and
way, shall bo nlade o • thl? uso tho samo »» any
which both parties narco °in Z\’;rXa0pt ?fc il l11’*0® to
‘Is shall be equal v ,?i, all not pro-

hereto. 1 y diuded between tlie parties

{nmjff binding' Sr Sf thn P'oyisipns of this agree-

m ?

sot their lmndsUand’ serUs^th pnr *°s Ilavu hol'onnto
abovo written. euls> t,le day and vem-

Witnesses :

U a Kolb Serkell.
LK-'UJEL IV. SERREht.

Thomas A. Edison, -

Georoe B.Presoott.

F REVOCATION 0

•Commissioner of Patents :

Sir : .Tlioro are on lilo in your oilico certain applU
cations for patents in my name, as sole inventor,
companied with a request

kfSC

. . _ the patents, when

allowed, to myself 'a ml George B. Prescott. . _

I made this arrangement with Hr. Prescott under
an erroneous impression. , ,

On tho 1st October, 1870, 1 mndo a copartnership
contract with Air. George Harrington, and on the 4th
April, 1871, in furtherance thereof, I made to him an
assignment, coupled with ap irrevocable power of
attorney, reciting the main provisions of the contract, 117
both of which are still in full force and effect, where¬
by the control of theso inventions was placed in tlip
hands of Hr. llamngtoip .

Under and by virtue of this power of attorney
and assignment therein, Mr* Harrington claims title
iu these inventions, and objects, and has objected,
to any deviation from the said assignment and power
of. attorney. 1 therefore withdraw my request for
the issue of patents for duplex and quadruples
transmission to Edison and Prescott, and unite with 118
George Harrington in his petition,' this day hied m
your office, requesting tho issue of the letters patent
to Geo. Harrington and myself, in the proportions set
forth in tho power of attorney and assignment of
April 4th, 1871, and the contract therein recited.

Respectfully yours,

Tnos. A. Edison.

Washington, January 23eZ, 1875.
To . the Commissioner of Patents
Your petitionor, a citizen of Washington City ,

District of Columbia, prays

•<£' ‘ogssjsar gw
arfnsrc,?” -Ktfeia

120 dated

N°- 05, diffn ,i:t. .

“ % B & p a
IS S £ £ £

1 tilioHor Wafdu! V .wn,1?0!' -1' °f ®M«moy (o your no-'
1871, in O^Vcty

r »«r poiffi; r ii&SfaL* otTn«^s of Patent
paleitf i j { o f 1 l’8 tl'ot ‘lie letters
said tdisou, in tlio inonoi io„ iS"“ J° llimself ‘uirt
th"0s (o llimself !i ,J ! “ " c interests of (wo-

Providedinsaidpolv',0^^ £ S!l‘d .®Hson, ™

» Mid power of aliornn0 Edis°»> ■«
v 01 ••“toniey and assignment.

' ery respectfully',

Cfico. Hakkijcgtox.

10V ®omt

Geoiioe B. Pp.Escorr, impleaded, V

George B. Prescott, for liis answer to tlio complaint

Second. — Denies any knowledge or information suf¬
ficient to form a boliof of any of tlio allegations con¬
tained in tlio third, sixth and' soronth articlos, and in
that part of the eighth articlo ending with tlio words
“ Gold and Stock Company,” in tho 9tli folio.

Third. — Donios all tho allegations of tho fourth and
fifth artiolos, and all the allegations of tho eighth arti¬
cle hoginniug with tho words “Duplox and Quadruples
Telegraphs,” in the 9th folio,

4 Fourth. Admits tlio allegations of tho ninth articlo
except tlmt so far ns the provisions of law thoro ro-
fered to required tho paymont of any foos or moneys
m connection with tho applications tliero inontionod,
ho says tlmt tho truth is that such fees and moneys
wore paid by himself, and in pursuance of tho ngreo-
mont betweou himself and Edison horeinnftor referred
to, nud not by tho dofondnut Edison, and that tho
amounted such fees and moneys paid by him wns the

. Fifth. — Admits that onjtho 19th day of August, 1874

tho defendant Edison did oxocuto and dolivor to him
5 the agreement referred to in tho tenth article, and
alleges that said Edison had full power and right so to
do, and that tho said agreement wns and is a valid
and binding obligation upon the parties thoreto, ac¬
cording to its tonor; and 1m douios that such agree¬
ment was so executed or delivered by said Edison in
violation of any agroemout on his part with said Hnr-
rington, or without his 'consent.

Sixth.— Douios all the allegations of tho olovouth
m ticlo and of that part of tho thirteenth article ending
uiththe words, “said several improvements,” in tho
15th folio, except so far ns they are admitted in the
seventh article lioreof ; and denies any ltnowlodgo or
tQ f0r“ “ belicf ot th0 allegations
of the twelfth and fifteenth articles, except that instru- ,,
ments in tho form sat forth in Exhibits 6 and H re- .

VT’ prior ‘.° tllQ 21at day of March, 1876,
piosonted to the commissioner of patents.

“-d8,10 thar ^legations 0f tho eleventh and
th rteenth nitic os aforesaid, defendant says, on his

JanCT87n5 tb i0tl ‘ ?** *° tho
conS'ol8 Ji5’ tbo commissioner of patents lmd not ■

urtic o nor ‘■j0 .“PP^'OMroforred to in the ninth .

chameter of H “med 0nythinS «*«» «a to tho
character of tho improvomonts doscribod in them, or

ns to tho inventor of the said improvements, or ns to 7
tho issuo of iottors patent for oithor of thorn ; but tho
said commissioner, after receiving the instruments
marked G and H, and after tho 19th day of January,
1875, did first proceed to consider tho applications
filed by Edison, roforred to in tho ninth nrtiole, and
did, on or about tho 20th day of March, 1875, render
his decision as sot forth in Exhibit J annexed to tho
complaint.

Eighth. — Doilies tho allegations in tho thirteenth
article that tho issuo of Iottors patent to himself and
Edison would work irrepnrnblo, or any injury to tho
plaintiff, or any injury which could not bo compensated 8
by damages ; and tho allegation that said improvo¬
monts expedite tho transmission of telegraphic mes¬
sages ; and also tho allegation contained in the last
paragraph of said article relating to tho dofcndant
Sorrell.

Ninth. — Doilies that tho ngreomont betweou himself
and Edison, roforred to in the fourteenth articlo, wns
oxocutcd under tho ndvico of counsol who wns nlso
counsol for tho dcfondnnt the Western Union Tele¬
graph Company’; or that such ngreomont was executed
nndor tho ndvico of counsel for this defondnnt, that
tho ngreomont botwcou Edison nud Harrington, g
there roforred to, did not inclndo duplex and quad¬
ruples telegraphy ; or oitlior of thorn, or that Edison .
was misled into oxccutiug tho said agroemout betweou
him and this defendant by any such ndvico as is
alloged.

He admits that at tho timo referred to in tho 21st
folio ho was tho oloctriciau of the Wostorn Union
Telegraph Company ; that ho did pay tho foos, and
assist Edison as allegod in subdivision 2, down to aiid
including the words “said inventions nud improve¬
ments ” in folio 28 ; tlmt tho "Western Union'Tolegraph
Company paid Edison $5,000 (but not on account

10 of the twenty maohinos referred to in tho 25th folio
and only ns in tlio thirteenth article hereof is more
fully sot forth), and also that tho Western Union Tolo-
grnph Company has manufactured many mnohiucs
embodying tho improvements referred to in tho fifth
subdivision and is now using tho snmo, nnd donios nil
the other allegations of tho fourteenth article.

Tenth. Donios that before the 1st day of July,
nolr nt any.fimo boforo tll° 23d day of January,
1870, he had notico of tho alleged agreements botwoon
liaison . and Harrington, referred to in folio 20, nnd
says that tho Western Union Tolograph Company
1 does claim to bo tho ownor of the inventions nnd im¬
provements mentioned in tho applications there ra¬
ff1'1'0.11 to, and this by virtue of agreements botwoon
itself and Edison, and between itself, Edison and this
defendant; and that tho ngroomout, in virtuo of which
said company becnmo suoli owner, was closed and-
consummated before tho protended rescission by
Edison of his ngroomout with this defendant, nnd bo¬
foro the instruments G audH were Bled in tho United
States Patent Office.

, Elcvcnl/i.—And for a further answer to tho com-
l la t tl dofeudaut says, upon his information and
1 ^ .th 1 f°r “oro tlmu a year nest preceding May,
18,4, the defendant Edison had been making oxpori-
r th° Plu'P°S0 ot improving and adding to tho
oapadtms of tbo so-called Stearns duplex system of
clog inphy and 0f making new discoveries and inven-

ans' “ •POX,tqr‘ll'Upl0S an(1 ot]lor motl8a ot multiple
an m’ssmn of electric signals on the same wire ; that
thes ex! crime ,ts ha 1 been carried on by him under
TolZTn W“h 11,0 tlofon<lant «><> Western Union
comnanv’’ 1,uloi“aft" referred tons “the

S, !0r°^,“ llad bao" “S^ood that all such
eomnanv a? ‘°"i ^ mad° for tlla baaa^ of the said
P y. with the uso of tolographio material,

apparatus, operators and other facilities furnished by 18
it, and that all tho inventions nnd improvements of the
character nbovo named, which should result from such
experiments, wore made for, nnd wore' to be the prop¬
erty of snid company ; nud that from nbout tho winter
nnd Bpring of 1873 until tho spring of 1874, the said
Edison had boon at work upon such experiments, and '
had made certain of tho dosirod improvements and
inventions whilo working under snid arrangement with
tho defendant company.

. During tho month of May, 1874, Edison solicited
this defendant to assist him with his skill nnd expe¬
rience ns an electrician, nnd to join him in his experi¬
ments nnd work under his agreement with tho com- lfj.
pnny, and offered to share equally with this defendant
tho profits to bo dorived from tho inventions nnd im¬
provements mado under such arrangement with the
company nnd otherwise; and it resulted from such
propositions of Edison that on or nbout the first day of
June, 1874, Edison nnd this defendant agreed togotlior
that further experiments of tho diameter, nnd for tho
• purpose, nbovo described should bo prosecuted by
thorn jointly, and that wlintoyor profits should
nccruo from the inventions nnd improvements made by
them or either of thorn during such experiments, nnd
including tho price to bo pnid by tho defendant com¬
pany, should bo divided equally between them ; and
shortly nftor, an ngroomont of this tenor was put into
writing nnd signed by oach of tho said parties . in the
form sot forth in Exhibit E, and was recorded in tho
Unitod States Patent Offico on tho twonty-ninth day
of August, 1874, in Libor E 18, pago G2 of Bogisters
of Patonts. After tbo making of these agreements,
Edison frequently stated to this defendant that he nnd
this defendant wore working for tho defendant com¬
pany on such terms of his arrangement with it ns are
nbovo described, and that all inventions and'improvo-
monts whioh resulted from his . and their experiments,
and especially all of thorn whioh related to duplex or

16 other modes of multiple transmission, word boing 1
for and were to bo tho property of the dofondnul
culsivoly, and that tho defendant company was to
for all such inventions and improvements and lo
patent as might bo procured thorofor, such pric
should bo just. 1

fomln0nt‘“Trvtl10 Said nS1'00'“onts between this
ondant and Edison woro communicated to the dob
ant company at or about their several dates, an

Fresco t i V "' thf°nftor witI' Edison
lof61'ono° to Edison’s agreen:

be°t«lln» 'Tr!1- ^ «W^eb»pa1^l^

-dinveutimLahe0^ £ 7 72 ^727

Edison alo^n in Wm tho P1"™

2^^^.^-Sinss

the service of el! '’ ap|mratu3 Hues, an
ises and its own expense * °" lts owu P10tt

and^vlillfworkhiK ?'™!,somout '««* this dofondanl
m°nt as LeIointLrBet1;rPa“rUPnCl0r h“ «*«
ant becamo Associated with ““‘l nft,°5 ll,,s clofoml
aforesaid, tho dofoudantErli^ "'!tlor,hls agroomont!
ahlo improvements dio °n did mako cortnin valu
neotod with du ‘ ‘8’ ttud ^outions con.

“uplex and quadruples and other modes

of multiplo transmission ; and during this poriod, and 10
boforo tho nineteenth day of August, ,1874, had in¬
vented tho so-called quadruples mode of transmission,
and all tho improvumouts described in tho applica¬
tions Nos. 94 to 100, both inclusive ; and beforo tho
30tli day of September, 1874, ho furnished, jointly ivith
this defendant, to tho company all necessary drawings,
descriptions, uud spccilicntious for experimental or
practical uso by it of apparatus embodying tho
snid inventions described in the applications num¬
bered 94 to 100, both inclusive, and particularly tho
quadruplox invention and tho improvements described
in application No. 99. And tho defendant company,
under Edisou’d direction and assistance, during tho ,,g
months of September and October, 1S74, constructed
many sots of machines mid apparatus embodying many
of said improvements and inventions, and particularly
tho quadruplox and tho improvements described in np-
plicntion No. 99, and with tho full knowledge and con¬
sent of said Edison put thorn into practical uso oil
its lines and in its ordinary business, as boing its
own property, mid such uiacliinos and apparatus
havobcou so used by tho defoudnnt company ovor
Binco that time with Edison’s full knowledge and con-
sont.

And defendant says, upon Ins information and belief,
that all tho uinttors aforesaid iu respect to tho dis-
cpvorics by Edison, and tho appropriation; with hisknow-
ledgo and consent, to tho uso of tho defendant company
of tho nppnratus and machines, and tlioimprovonionts
and inventions embodied iu them ns boforo described,
woro well known to Uils 'plaintiff and to George Har¬
rington at or about tho dates of said sovcrnl ovouts,
and that noitlier of thorn beforo January tho twenty-
third, 1875, ovor questioned, or claimed anything to
tho coutrary of, Edison’s or of dofondnnt company’s
right to do ns tjioy respectively bad douo, as aforesaid.

Aid’ tho dofondaut further says that after his
dealings witli Edisou began, in or about May, 1874, aud
throughout that year to its ond, Edison of toil roitoratod

•***> ■ ■ ■ T ■' '■ •■ ■■ ,

22 the naturo and terms of his ngroomont with tho do-
fondant company to tho samo effect as is set forth
in folios 12, 13, 16 and 16 hereof ; and aftor tho
agreement of August 19tb, 1874, this dofondunt and
Edison on tho one part, aud the defondant company
on tho other part, always dealt togotlior on tho under¬
standing and basis of 9uch agreement, and at all
times, aud up to and after tho 20th January, 1876, it ’
was agroed and understood by this dofondunt and
Edison on tho one part, and tho 'defendant company
on tho other part, that all the inventions of Edison in
connection with duplex aud quadruples telegraphy or
other modes of multiple transmission, and especially

23 of tho inventions described in tho applications Nos. 94
to 100, both inclusive, reforrcd'to in tho ninth articlo of
the complaint, hnd boon made for and bolonged, upon
their making, to tho defendant company, and that Ed¬
ison was bound under his original agreement, and this
defondant was bound with him by virtuo of thoir
agreement of August the nineteenth, 1874, to Becuro
all said improvements and inventions by proper instru¬
ments, and by assignment of letters patent thorofor,
when procured, to the defendant company.

And this boing tho agreement and understanding of
all the parties, and there boing no point undetermined
botweon thorn in respect to said inventions and im-

24 provoments and letters patent, except tho ascertaiuiug
the preoiso amount to bo paid for thorn ; and it having
been also understood and agreed that this should bo :
ascertained in due timo oithor by ngreomont of the
parties, or, if that failed, by arbitration — on tho tenth
day of December, 1874, tho said Edison, and about tho
sixteenth day of January, 1875, this defendant, askod

1 and received, of tho defondant oompany tho respective
payments of fivo thousand dollars eaoh, in anticipation
of the fixing of the definite price aforesaid, and on no-
count thereof, and then severally oxcautcd and delivered
to tho defendant company tho instruments, copies
whereof aro hereto annexed marked Exhibits A and B

And on the sixteenth and thirtieth days of Decem¬
ber 1874 this defendant and Edison submitted propo¬
sitions in writing as to tho amount of such price,
copies whereof are hereto annexed marked Exhibits
0 and D; and the last of said propositions remain¬
ing open up to the 19th of January, 1876, and
the agreement and understanding of Baid parties, as
to tho exclusive right aud ownership of the company
in ond to all tho inventions und improvements there¬
tofore made by said Edison connected with duplex
and qnadrupiox telegraphy, remaining as aforesaid
on said 19th of January, 1875, said company acceptod
tho second of said propositions submitted by the offor
of December 30th, and so notified this defendant and 26
Edison. And this defendant has ovor since that time
always been and now is ready to make a l proper and
necessary instruments to seouro tho title of said im¬
provements and inventions to. the defendant company
in virtuo of its said agreements with Edison, and with
Edison and this defendant.

Twelfth. — And for further answer this defendant
says that Edison had full power aud right to make 4 ho
agreements, and especially the agreement of ^ug'Urt
19th, 1874, which he did mako with this defends ,
and that neither at that date, nor at any 8 ,

the 1st January, 1873, did any auoh agreement as that ^
referred to in the third article of the complamh pr
plaintiffs- Exhibit A, exist between Ecbsonand Har-
rington ;'and that no such instrument ns

in the fourth article of the complaint was execut 1 by

Edison, either to fulfill or to cany out sue ^ alleged
agreement of Ootober 1st, 18 0, ^tW»ote
agreement between Edison and any t P ,.
bade or invalidated any snob agreements as Edison

made with this defendant ns herein alleged.

And the defendant further alleges that neHhmof
tho alleged agreements Bet forth in plaintiff

Exhibit A.

Mbits A and B, contomplnto or covor any inventions
or improvements known ns duplox or qnndruplex sys¬
tems or modes of transmission, or any oilier modo of
multiple transmission, or any of tbo inventions or im¬
provements, described in tho agreement of August
19th, 1874, mndo by Edison sinco January, 1878, or
any of those dosoribod in the applications numbored
94 to 100, both inolnsivo, referred to in tho ninth nrti-
ole of tho complaint.

Wherefore, this defendant demands judgment that
the oomplnint be dismissed.

Porter, Lowrey, Soiien & Stone,

' Attys. for deft. Prescott.

State op New York, )

City and County, of Now York, |ss- : . ■' ^

George B. Prescott, being duly sworn, says : that ho
is the defendant abovo named ; that tbo foregoing an¬
swer is truo to his own knowledge, oxcept ns to tho
matters therein stated on information and belief, and
that as to those matters iio believes it to bo true.

Sworn to before me, this 1 yO „

yJH ay of May, 1879. f

Notary Public,

N.Y.Co.

PRELIMINARY RECEIPT.

N. Y„ Deo. 10, 1874.

Whereas, Thomas A. Edison and Georgo B. Pres¬
cott nro tho Inventors of certain improvements in
Telegraphy, minting to Duplox and Quadruples tele¬
graphing, for which Lotters Patent of tho TJiiitod
States have been nppliod for by said Inventors ; and
Whereas, said Edison and Prescott linvo agreed to
assign all their right, titlo and interest in and to said
Inventions and Letters Patent to the Western Union 82
Tolograpli Company, provided tho torms of payment
for such assignment und transfer shall bo satisfactorily
adjusted between tho said parties and tho said Tele¬
graph Company r

I, tho said Thomas A. Edison, hereby acknowledge
tho receipt of Gvo thousand dollars, to mo in hand paid,
in part payment for my interest in tho said assignment
and transfer.

Witness my hand and seal this tontli day of Decem¬
ber, 1874.

Tnoanvs A. Edison, [l. s.]

Witness, 33

A. R. Brewer.

City and County of Now York, ss.:

On this 21st day of January, 1876, before me per¬
sonally appoarod A. R. Brower, to mo personally
known, and known to mo to bo tho subscribing witness
to tlio foregoing instrument, who, boing by me duly '
sworn, said that ho resided ' in tho oity of
Brooklyn, in' tho State of Now York ; that ho
was acquainted with Thomas A. Edison, and
know him to bo the person described in and whp

executed said instrument; and that ho saw him
exeoute and dolivor the same ; and that ho acknowl¬
edged to him, said A. E. Browor, that ho executed and
delivered the same ; and that thereupon he, said A. B.
Brower, subscribed his name as a witness thereto.

H. M. Haim,
Notary Publio, N. X. Co.

B. H. Boohebteb, 37

Treasurer.

On the delivery to you of this paper, pay George B.
Proscott tho sum of five thousand dollars ($5,000).

(Signed,) William Outon,

President.

January 10, 1875.

Beceivod fivo thousand dollars, Now York, January
16, 1875.

(Signed,) GEonaE B. Pbescott.

Exhibit B.

PEELIMINABY EEOEIPT.

New XorR, January 1G, 1875.

Whereas, Thomas A. Edison and George B. Prescott
are tho joint owners of certain improvements in tolo-
graphy, relating to duplex and quadruple! tolegrnph-
mg, for which letters patent of tho United Stntos havo
been applied for by said Thomas A. Edison ; and
Whereas, said Edison and Proscott have agreed to
assign nil their right, title and interest in and to said
inventions and lotlors patent to tho- Western Union

36 ®jloSraPl1 Company, provided tho terms of pnymont
for such assignment and transfer shall bo satisfactorily
adjusted botweon tho said parties and tho said Tolo-
graph Company.

• I, the said Georgo B. Prescott, hereby acknowledge
the receipt of fivo thousand dollars to mo in hnnd paid,
m part payment for my interest in tho said assignment
and transfer.

uary 1876 ^ lm“a and 80ftl tbis sixteenth day of Jan-
Witnoss- (Signed) Geohoe B. Pbescoit.

(Signed) Geiiiut Smith.

Paid, Januaiy 1G, 1875, by

E. H. Eoohester,

Treasurer.

Exhibit C.

New Xouk, December 16, ’74.

Hon. Wm. Outon,

Frost. W. U. Tol’gli Co.

D’r sir, — Your company has now ovor 25,000 miles
of wiro, which can now bo profitably “ Quadruplexod.”

Considering tlioso 25,000 milos to be alroady Du¬
plexed, the Qundruplox will creato 50,000 miles addi¬
tional.

For nil our pntonts, and offorts in protecting tho com¬
pany in the monopoly of tho snino during their life, wo
will take 1-20 of tho average cost of maintenance of
50,000 miles of wiro for 17 years, one-third down and
tho balanco in yearly payments during the above men¬
tioned period. “ Half of suoli payments to cense the
momont any other porson shall invent and put into
practical operation a quadruple! (not infringing onr
pntonts), upon n oirouit of 400 miles in length.”

Yours, eto.,

(Signed) Tnos. A. Edison.,
Geo. B. PitEscorr.

40 Exhibit D.

Two propositions :

1st. "Wo will take twonty-fivo thousand down and
twonty-fivo thousand in six months for nil Patents,
and a royalty on duplex of $166 por year for each cir¬
cuit created.

2d. 'We will take twenty-five thousand down for
all patents, and a royalty of $283 por yoar for oncli
circuit oreatod.

Stojjfrior Court of offdu |oiiu

Tiik Atlantic and Pac
(iKAi-ii Com pan

Gkouoe B. Piussoott, Tin: Wkstkiin
Unton TKr.KditAVii Com pax y, Lem- j
uel W. Sun hem., and Tiios. A. Edi- I

l'. Tlie defendant, the said Thomas A. Edison, an¬
swering the complaint herein, admits that the plain¬
tiff is a corporation, as alleged in the said complaint ;
and that the defendant, The Western Union Tele¬
graph Company, is also a corporation, as therein
alleged ; and this defendant also admits the allega¬
tions in' paragraphs 3, 4 and 5 of the said complaint, 4
subject to the explanations and qualifications here¬
inafter stated.

6 And this defendant admits that on the 1st day of
October, 1870, he made and entered into a contract
with one George Harrington, as alleged in the com¬
plaint.

And this defendant says that the said Harrington
and his associates thereafter and uj> to the 19th of
August, 1874, and afterwards, expended through,
this defendant and under his directions large sums
g money in developing this defendant’s inventions
in and relating to Electric Telegraphy, including his
inventions in Duplex and Qundruplex Telegraphy.
And that on the 4th of April, 1871, thisdefendantexe-
cuted and delivered an assignment, with a power of
attorney, to said Harrington, as alleged in the said
complaint. And this defendant says that, the said
Harrington held the said assignment and power of
attorney as a trustee for the benefit of tills defend¬
ant, jointly with the said Harrington and various
1 * is 1 , supplied the greater part of the funds
expended in developing the said inventions.

2. The title in and to the patents for said inven¬
tions was vested in the said George Harrington and
this defendant in the proportions of two thirds in
thu said George Harrington, and the remaining one-
third m the said T. A. Edison. And thesaid George
Harrington hold the title to and power to dispose of
tin. said patents and inventions, so as to preserve
tlie unity of the title thereto.

And it was originally understood and agreed that
the saul patents and inventions should be held by
the said George, Harrington in trust, to be disposed
ol.foi* the benefit of his said associates, in eonjunc-
tion with himself, in certain shares and proportions,
such trust being deemed necessary by the said Har¬
rington, and his associates, and this defendant, to
avoid thu great difiiciilties, loss, damage and injury
consequent upon thu legal exercise of thu power of

disposition held by any one of several parties jointly 9
holding the titlo to a patent for an invention.

And it was agreed by and between thu parties
aforesaid that tho said patents and inventions should
be sold and transferred to a. telegraph company or
companies, in consideration of money or stook, or
royalties, to be distributed amongst the said George
Harrington, this defendant, J. C. Keiff, John Mc¬
Manus nnd others, their associates as aforesaid, ac-
cording to their several shares, rights, and interests
therein.

And the said patents and inventions have always
been held by the said George Harrington in trust
as aforesaid, and lie lias at all times recognized that
relation and acted accordingly, and has in conse-
qence thereof, been intrusted from time to time by
his said associates with the possession of large sums
of money, amounting to some hundreds of thousands u
of dollars, to be disbursed by him in and about the
purposes of the said trust. And this defendant has
from time to time taken out many patents in the
names of himself and the said Harrington, 011 the
faith of the said trust, and the due performance
thereof. And the said Keiff, McManus, and Harring¬
ton, nnd their associates, have supplied the funds to
pay for the said patents, and for models and draw¬
ings, and fees of patent agents and' solicitors, and
have paid the expenses of experiments to test, the 12
inventions.

3. By a certain memorandum of agreement bear¬
ing date noth December, 1874, under the hands of
Jay Gould, the said J. 0. Keiff and John McManus,
it was declared that it was thereby understood
that they should heartily co-operate in concluding
an alliance between the Atlantic and Pacific Tele¬
graph Company and the Automatic System on the
basis therein mentioned. And it was therein men-

13 honed flint the price to be paid for tlie patents for
the Automatic System, contracts, &e., should be
40,000 shares of the stock of the said company.

The si 1 mini i with the propositions
therein contained, approved and confirmed by the
said George Harrington and his associates.

4. It was understood and agreed by and between

14 hie said Keiif and McManus and Gould, that the
said proposed sale to the Atlantic and Pacific Tele¬
graph Company for the said 40,000 shares of stock,
should embrace certain patents for this defendant’s
inventions m Electric Telegraphy, which are speei-
ieiL ni certain deeds dated respectively 1st January,
187o, and nth April, 1870, purporting to be tnins-
iers hy said Harrington to said Gould, and which
deeds were delivered to said Gould for a special
purpose, as hereinafter mentioned, and that said

15 *!"° H,,0ldd diso embrace certain patents and inven-

ons °f .George Little, in or relating to chemical
automatic telegraphy, and also a certain telegraph
line from Lew York to Washington, with its offices
•mil appurtenances.

The said The Automatic Telegraph Company held
U3 said line of telegraph under a certain contract
tor the purchase thereof by them from tile National
in f,?k‘g''ai," Coml>imy, and also held the right to use
r e smd patented inventions of the said George
w tie, under contract with the lust-named company

for the purchase thereof.

,jVld tl;u Automatic Telegraph Company also
IT . vfld>ld revocable license from the said George
to i,‘n? 0n> ')’tb tbe llss,:nt of life said associates,
to use the said inventions of this defendant upon
1-S1 r^U8ml,hline- And this defendant np-
. l,'-‘ snid biu'Sain 11Ild of the apportion-
f of lhe s,dd stock, ns hereinafter mentioned.

f,. Shortly after tlie said agreement of SOtli De- 17
cember, 1874, was entered into as aforesaid, it was
arranged by and between the said George Harring¬
ton and his said associates and tlie said Jay Gould,
that the said 40,000 shares to be paid for tlie several
properties aforesaid, should bo divided and appor¬
tioned as follows, viz.: that 81,800 of the said shares
should be paid for the said patents and inventions
of this defendant, and 8,200 of the said shares for
the rights, titles, and interests, as aforesaid, of the
Automatic Telegraph Company and of the National 18
Telegraph Company, and or the said George Little
and' liis assigns.

ft. It. was arranged by and between the said
George Harrington and liis associates, and tlie Au¬
tomatic Telegraph Company and tlie said Jay Gould,
that the Atlantic and Pacific Telegraph Company
should have the l ight to purchase the said property
on tlie terms aforesaid, and should be let into pos- ^
session of the said telegraph line and offices, and
have temporarily tlie right to use the said inven¬
tions upon their telegraph lines, until the comple¬
tion of the said purchase.

7. And this defendant admits that on or about
the 1st day of January, 1875, tlie said Geo. Harrmg-
ton on his own belmir ind is attorney to th a
defendant executed and delivered to J. &ould

deed of assignment bearing date that day, of winch 20

a copy is annexed to the said complaint.

And this defendant says that the said d,®d dld®d
1st January, 1875, was made maccortoicevi t he
said agreement of 80tli December, 1874, and in the
expectation that tlie bargain thereby pmposea vv o Id
be promptly fulfilled, and upon thes pae Go at
such transfer conditionally vosUuK « i *»d

Gould for the benefit of the intended puicluisei,
die Atlantic and Pacillo Telegraph Company, would

21 strengthen tin; case against The Western Union
■telegraph Company, which company falsely claimed
to have made a contract with this (defendant for the
purchase of the said inventions from him.

8. It was not understood and agreed by and be;
tween the and Harrington and Gould upon the treaty
Gnnm Sa'd d,eed ?f lst January, 1875, that the said
as “5 t*le nominal consideration of one
23 ' T1 m rho said aeed, to become the owner

T' inventions in duplex and quadruple*
ehgraphy for lus own individual benefit. Nor mis
understood and agreed by and between them that
“d Harrington should undertake to sell and
1 ‘ "j, Si,.ul inventions without receiving any
oiisideintum therefor for the benefit of this defend-
nssn * f Si"fd ,Rellr a,ld McManus and others, the
the oii • °.r, H'e SUid Harrington, who had supplied
■}. “'P1!* Part o|- the funds required for and
2a usui m the development of the said inventions.

b„K R!‘tu U ";a» understood and agreed bv and
when t e le-SiiUi Harri,lgton aud Gould, before and
c l ed H Saul1deea °X l8t Juuuury, 1875, was oxe-
Conm,„t lati th?1Atlantic »»d Pacific Telegmph
S2? :S 0UlabtVe benefit of the transfer
rnentim, 1ade> uPon l,ie completion of the bargain
1874t wvV" ‘ f SUid “ficocment of 30th December,
24 this dl, 1lLTb.ra,!eda11 the Mentions made by
wlmt is commonly known as
annliuihle « Xe ®®l1lpliy, and all his inventions
in *dimi 10-,eto» and embraced the said inventions
beimSinn^ T",d,'U1>lex to!egiupliy, tlie same
e»ig applicable to Automatic Telegraphy.

defen,WS?ilemad,en8 hereinafter mentioned by this
dehindm tl, rough said Gould, his attorney, to

tmnsfm e M •ttSviateUdod t0 be. «nd '« in fact, a

P reeds of d10nd,mt’s sl,a>-e °f one third of the
I cuus of any sale or other disposition whichmight

be completed by the said Harrington under the said 25
trust and power hereinbefore referred to.

11. And this defendant, further answering, ad¬
mits that lie did, ns alleged in the 7th paragraph
of the said complaint, on the 4th January, 1875,
execute and deliver to the said Gould an irrevocable
power of attorney, of which a copy is annexed to
the said complaint.

12. And this defendant admits the allegations
contained in the 0th, 10th, lltli, 12tli, 18th,' 14th,
lfitli, 10th mid 17th paragraphs of tin; said „o...-
plnint, except that part of paragraph 13 which re¬
lates to I,. W. Serrell, and which this defendant
denies. And except that part of said, paragraph 16
alleging that the Western Union Telegraph Com¬
pany closed or consummated the alleged agreement
therein referred to. And this defendant says that ^
eucli alleged agreement was not closed or consum¬
mated at all. And this defendant also admits that
barograph 8 contains a correct description of duplex
and qundruplex telegraphy, and the meaning of tlie
word “ fast” as applied to tlie same, and its applica¬
bility to the automatic system of telegraphy.

And this defendant says that he made the contract
with the said Prescott, dated 10th August, 1874, in
consequence of mistakes made mutually by himself 28
and the said Prescott, in regard to the true contents
of tlie skid deed of 4th April, 1871, and tlie legal
effect- thereof.

13. The said George Harrington being in ill health
and about to leave the United States, it was deemed
prudent and advisable to obtain from him a transfer
of the patents and inventions of this defendant
hereinafter referred to, ready to take effect upon
the completion of the said proposed or intended

I.urclins.! by tlio Atlantic and Pacific Telegraph
Company, and also a transfer from the Automatic
telegraph Company of its rights and title as afore¬
said, unto the Atlantic and Pacific Telegraph Com¬
pany, to be delivered upon the payment by them of
the said 31,800 shares, and 8,200 shares of stock,
winch they could not under their bv-Inws issue
without a compliance with certain provisions therein
which involved considerable delay.

And accordingly, on or about the 0th day of
Apr’i, 187o, file said George Harrington, in the
.1 .and expectation that the said proposed bar¬
gain, made on the 30th day of December, 187-1, would
lie fulfilled by the saiil the Atlantic and Pacific
telegraph Company, did individually andasattor-
ney for this defendant, execute a certain deed Inur¬
ing date 0th April, 1875, purporting to be an assign¬
ment to the said Jay Gould of the patents and in¬
ventions of this defendant therein referred m. for
the nominal consideration of one dollar.

And the said deed was, by an instrument in writ-
f w e'' ,mnd llud of this defendant, bear-
g date loth April, 1875, approved, ratified and
confirmed by this defendant.

14. 1 he said George Harrington, on the 10th day
I’1’.?875’ 1"lnded the said deed of 9th April,
r h S1‘,rt Jay «0|ild, as a trustee or agent
will ei 71tl,l'ltic ,,,,d Telegraph Company,

dral.,i ? o' the Sllid Guo'B« Harrington ad-
dassal to the' said Jay Gould, and signed by the
s m George Harrington, requesting him to withhold
the said assignment until the Atlantic and Pacific
le egraph Company, should deliver to him, the
ei ( Jay Gould, 31, 800 shares of the stock of the
said Company and then to deliver the said assign-
noiit to them And in and by the said letter the
said Jay Gould was directed to hold the said 81,800

shares of the stock, to be delivered to the said 83
George Harrington, J. C. ReilT, John McManus
and others named therein, m the shares and pro¬
portions tliurein mentioned.

If). The said Jay Gould did not pay, or premise
or agree to pay, to the said George Harrington, any
consideration whatever for the said assignment to
the said Jay Gould of the said patent rights held
by the said George Harrington in trust as aforesaid. g4
Nor did the said Jay Gould pay, or promise, or
agree to pay, to the said Thomas A. Edison, any
consideration whatever for his said ratification there¬
of. Nor did the said Jay Gould promise or agree
that the Atlantic and Pacific Telegraph Company
should pay any consideration therefor. Nor did
the Atlantic and Pacific -Telegraph Company pro¬
mise or agree to purchase the patent rights and in¬
ventions embraced in the said deed of 9th April,
1875, for any price or consideration, lint it was gg
understood and agreed by and between the said
Geoige Harrington anil his associates and the said

Jay Gould that the Atlantic and Pacific Telegraph
Company should have the right to purchase the
same upon payment of the consideration specified in
the said letter of the 10th April, 1875.

10. When the said Jay Gould entered into the said
contract, dated December 30, 1874, lie was tally
aware of tlio rights of the said J. C. Iteitf and John 36
McManus, and their associates having had direct
notice thereof from the said J. C. Koiff and John
McManus, and from the said George Harrington, and
otherwise. And the said George Harrington, on or
about the 12th day of January, 1875, wrote a letter
to the said Jay Gould, referring to the said contract
of 80th December, 1874, and expressing lus, the said
George Harrington’s, approval thereof.

And the said letter of instruction, dated 10th

37 April, 187 5, written by the said George Harrington
to tile said Jay Gould, and delivered to him ns
aforesaid, with the said deed, dated Oth April, 1875,
was drawn up with the consent and approbation of
the said Jay Gould, and was received by him, with
the said deed, upon his promise and undertaking to
abide by and follow the terms, stipulations, con¬
ditions and directions therein contained.

17. The plaintiiT had, prior to taking any action
in regard to the said patents and inventions, and the
said telegraph line from New York to Washington,
and the business thereof, full and direct, as well as
constructive notice of the facts and circumstances
aforesaid in relation to the said agreement of 30th
December, 1874, and the said deeds and tin1 said

18. It was assumed by the said Harrington and

39 us associates, and by the said Jay Gould, that the
bin-gain specified in the said agreement, dated 30th
December, 1874, would be consummated, and ac¬
cordingly the plaintiff was put in possession of the
property agreed to be sold to it us aforesaid.

19. The Atlantic and Pacific Telegraph Company
have been applied to frequently by the saidJ. C.

,i‘' *or himself and his said associates, to com-

40 1 i,te , , 8a'd bargain and to pay the consideration
called for by the said deed of Oth April, 1875, and
the said instrument of writing delivered therewith
to the said Jay Gould; but the said company, by
ito officers and agents, have, from time to time set
up various reasons and pretexts tor delaying and
postponing suoli settlement, sometimes pretending
Hint they would settle as soon as Mr. Eckert, the
president of the said company, should recover from
his sickness, and be able to attend to business ; and
at other times pretending that they were waiting
tor Mr. Harrington and his associates to preform

their part of the contract ; but at last, and when 41
these pretexts could answer no further purpose,

'the said Atlantic and Pacilic Telegraph Company,
by their President and other officers of the said
company, declared that the said company would
not complete the said proposed purchase without a
large abatement of the price.

And the Atlantic and Pacilic Telegraph Company
having declared that they will not pay the consider- ^
ation agreed upon this defendant claims and innate
that the said transfers from the said Harrington to
the said Gould are inoperative and that the plaint ff
has no equitable title to the said inventions, and
nas no right to maintain this action.

20. And this defendant further, answering, says
that being entitled, as aforesaid, to one third pin t
share of the beneficial interest in tin said unc
of duplex and quadruples telegraphy muhn the
provisions of the said deed of 4th April, : , >

defendant, authorized the said Jay C<ml
and transfer the same tor 830,000, to S. M. Mil , and
accordingly this defendant gave to sail ’

above mentioned, a power of attorney, dated 4rii

January. 1875, authorizing him to sol and rai wfO;
allot this defendant’s right, title, and.nte^tinoi
to the said inventions in duplex and quad... plex
telegraphy. 44

And this defendant thereuponreceivedfromthe

said Gould the said sum of 830,000. ’ And l e said
Mills by deed dated, 11th January, MW. “J
recorded until April, 10, 1875, transfernkl «U lus
rights, title, and interest in and to the said
unto the Atlantic and Pacific Telegraph Company.

21. And this defendant, further answerii^jys
that the saiddeed dated Oth March, 1875, .efe.ied

45 in tlie sixth paragraph of the complaint in this rase,
and purporting to ben transfer from said Harrington
to said Gould of the said inventions, was made, as
appears on the face of the said deed, merely for the
purpose of correcting a verbal error in the former
deed, dated 1st January, 1875.

City and County of New York, ss :

Thomas A. Edison, the defendant above named,
being duly sworn, says that the foregoing nnswei is
true except sis to those matters therein stated on
Station and belief, and ns to those matters he

22. And this defendant denies the allegation in the
complaint, that the said Gould did, in consideration of

46 the said assignments, to hint by the said Harrington,
dated 1st January, 1875, and 9tli March, 1875, pay
and deliver to the said Harrington a valuable and

lit consideration for the same. And this de¬
fendant denies that those deeds were ratified and ap¬
proved by Him for any purpose or object other than
the purpose and object hereinbefore stated. And
this defendant says that it was understood and
agreed, by and between the said Harrington and
Gould, that the said deeds were not to become

47 operative until the Atlantic and Pacific Telegraph
Company should pay the consideration for the same
stipulated as aforesaid.

Sworn to before me this 1
day of 1876. f

23. As to the allegations of the said complaint not
herein expressly admitted or denied, this defendant
has no knowledge or information sufficient to form
a belief.

ii~S£S$S!«

fjl. f}.. jfcijrerwr Cfltttl

Tnc Atlantic & Pacific Tele-

g HAITI Co.

, Answer of the

■ Wes tom Union

Tiie Western Union Telegraph ToleeraP'1 Co-
Company, impleaded, &e., and

The defendant, tho Western Union Telegraph Com¬
pany, for its answer to tho complaint herein :

First. — Admits the allegations contained in the first
and second articles thereof.

Second. — Denies any knowledge or information sulfi-
.cient to form a belief of nny of tho allegations con¬
tained in the third, sixth and seventh articles, and in
thnt part of tho eighth article ending with tho words,
" gold and stock company,” in tho 9th folio.

Third. — Denies all the allegations of the fourth and
fifth artioles, and all the allegations of the eighth

10 oott did pay the fees and assist Edison as alleged in '
subdivision 2, down to and including the words " in- ‘
ventions and iinproromonts'1 in folio 23 ; that it paid
to Edison $5,000 (not on account of tho twenty
machines rofarrod to in tho 25th folio, bnt only as in tho
thirteenth article hereof is moro fully set forth), and that
this defendant has manufactured and is using many
machines embodying the improvements referred to in

that this defendant or said Prescott refused to rece
suoli sums of money, or any part thereof, alleged
have been so offered by him.

Twelfth. — And for furthor auswer the defendant si
that on tho 4tli day of April, 1871, no such agreem
ns that referred to in tlio third article of the compln:

16 benefit mid uao of tho dofondant; and on its part tho de¬
fendant agreed to furnish to Edison facilities and material
for tlie prosecution of such experiments, and the dovel-
opmentfor practical uso in its business, of all his discov¬
eries and inventions which should result therefrom : and
itwns at the same time further agreed by both said par¬
ties that all such experiments and discoveries, anil all
tho improvements and inventions which should result
therefrom, and especially ail of those which related to
duplex or other modes of multiplo transmission, should
be made for tho defendant and Dot for said Edison ;
that all such improvements and inventions should,
upon the making thereof, bo tho property of the de-

17 feridant exclusively, and thut whatever letters pntent
for them the said Edison should bo entitled to by
law, as inventor, should bo applied for by him and be
transferred to the defendant; and thnt for nil such
inventions, improvements and letters patent ho should
receive such price as should bo just, nnd the amount
thereof should bo ascertained in due time either by
agreement of the parties, or if that failed, by arbitration.
These terms of the said agreement between the de¬
fendant nnd Edison wore repeatedly confirmed by
them during the years 1873 nnd 1874 nnd up. to tho
20th day of January, 1876. And this defendant and
Edison, up to tho time of tho agreements with Pres¬
cott as hereinafter set forth ; and after these ng —
ments, this defendant and Edison nnd Prescott, t
together in respect to all of Edison's experiments,
provomonts and inventions connected with duple:
qundruplox telegraphy, on tlm basis and in pursm
of such terms of said original agreement with Ed
as are nbovo sot forth.

In pursuance of this agroomout tho said Edison
gnu his experiments in or about the month of Eo
ary, 1873, and continued them from time to time
mg tho greater part of thnt year, and into tho wi
of 1873 and 1874; and at his reouest. and f

>bout the month of February, 1874, and throughout
;hat yonr, the defendant furnished to him larger facil¬
ities in material, the use and scrvicoof its lines, oper¬
ators, workshops, machinists and othor employes, nnd
especially in tho assistance of its electrician, George
B. Prescott; and during this period nnd before Sop-
tombor, 1874, Edison hud made certain of the desired

about June, 1874, tho said Edison t
igrccd jointly fwith this defendant to j
io condition of Edison’s agreement witli
d.

out the 1st day of June, 1874, and conti
until after the 10th day of August, 1874

34 their pretended title to the inventions involved in this

eotion.

On the 28th day of January, 1876, tho defondant
Edison, having over since said 20th day of January
kept himself concealed, so that no tendors of any sort
on the part of this dofondiint might be mado to him,
this defendant demanded of Prescott a conveyance to
it of tho interests agreed to bo conveyed to it by said
Prescott and Edison, and then tendered to him tho
money stipulated for by tho offer ' of Decomber 80,
and offered to oxecuto a’ proper agroemont securing
the royalty also provided for by that offer; thereupon
the said Prescott declared his willingness to sign and
gg execute all necessary instruments to seouro to this de¬
fendant the inventions aforesaid and letters patent
therefor, and to accept said money and agreomont
for the royalty; but that as the agreomont between him
and Edison required tho joining of Edison in such as¬
signment, and Edison refused so to join with him, no
such instrument could bo effectually made.

Fourteenth. — And the defendnut further says, upon
its information and belief, that beforo the dates or mak¬
ing nt any time of any of the pretended agreements
between Edison and Gould, or Harrington and Gould,
which nro alleged in tho complaint, tho snid Gould
3q was folly informed of Edison’s then existing agreement
with this defendant, and also of his agreement with
Prescott, all ns lieroinboforo sot forth; and of all
his relations with this defendant and Prescott, in
virtue of said agreements ; and was also informod, at
or about tho several dates of suoh ovonts, of the pay¬
ments to himsolf and Presoottof the respective sums
of $5,000, on account of the price to bo paid by this
defendant for his inventions and patents; and of the
- execution and delivery of tho instruments marked
Defondant’s Exhibits A, B, 0, D nud E, copies of each
of which were also delivered or exhibited to snid Gould,
at or about their several dates ; . and also, that this do- '

fcndnnt was, by virtue of its said original agree¬
ment with Edison, and of the subsequent agreements
between him and Prescott, the owner of inventions
in duplex and quadruplex telegraphy made since
January, 1873, and entitled to Letters Patent there¬
for, and particularly of those mentioned in the ap¬
plications Nos. 04 to 100, both inclusive, involved in
this action ; and that all these tilings were fully
known to said Gould before December 31, 1874, ex¬
cept the letter of January 10, 1875, and that that
was known to him at or about its date, and that all
of them were known to him before the execution or
. delivery to him, by said Harrington and Edison, or
either of them, of any such instrument, falsely pur¬
porting to have been executed on or about January
1, 1875, or such instrument, said to be dated March
0, 1875, as are referred to in the 0th article of the
coinphiint; and before the execution or deliveiy
to him by said Edison of any such instrument of
January 4tli, as is referred to in the 7th article of
the complaint ; and before lie paid any money either
to said Harrington or Edison, in consideration of
either of such instruments, or on account of the
inventions or patents in either of said instruments
referred to or alleged in the complaint.

The defendant further alleges that the said Mills
was before and at the time of the alleged assignment
to him of January 0, 1875, m intimate conlideutial
relations with said Gould, and in virtue of this, and
as his broker and otherwise, was accustomed, upon
an understanding to that effect between them to make
transactions and advance moneys in his own name
but for Gould’s account and benefit ; that any such
assignment to Mills as that alleged in the seventh
article was taken in virtue of the conlideutial rela¬
tions and understanding aforesaid, at Gould’s re¬
quest and for his puiposes, and as the intermediary
between Gould (acting in the name of Edison)
and The Atlantic and Pacific Telegraph Company ;
for the accommodation of both, and at their request,
and not for himself ; and with notice on the part of

14a

53 Mills of all the matters relating to the dealings be-
tweed Edison and this defendant or Preseott which
are above set forth in this article ; and if he paid
any consideration for such assignment, which this
defendant upon its information and belief denies,
without paying any such consideration for his own
benefit but only on C-tould’s account, and in virtue
of his relations aforesaid, and on the understanding
that whatever advance was so made by him should
be reimbursed him by Gould or the plaintiff, and

54 that he was to assign whatever interest passed to him
by said instrument to the plaintiff, or to such otlier
person as Gould should designate.

And the defendant further alleges that this plain¬
tiff and its executive ofiicers had notice before Dec.
31st, 1874, of all the matters which are averred in
this article to have been known to Gould in respect
to the relations of Edison with the defendant and
Prescott, and at and before the execution and deliv¬
ery to said Gould of any of the alleged instruments

55 of January 1st, March Oth, and January 4tli, 1875,
described in the Sixth and Seventh Articles, and at
and before the delivery to said Mills of the alleged
instrument of January Oth, 1S75, described in the
Seventh Article, and at and^ before the delivery to
it by said Mills or said Goidd of either of the in¬
struments purporting to be dated January lltli and
July 10th, described in the Seventh and Eighth Ar¬
ticles ; and that the plaintiff and its executive offi¬
cers at the time of the alleged assignment of Jnnu-

50 ary Oth to Mills, and at the time of the alleged as¬
signment by Mills to it, had notice of all the mat¬
ters relating to said assignment to Mills which are
in this article before alleged.

Fifteenth.— Ani[ for further answer, this defendant
says, that at or before the respective times of the
making of the said agreement by it with said Edison,
and by it with said Edison and Prescott, ns stated
m tlm thirteenth article of this answer, and of
the said furnishings by it of facilities and material,

and of the said payments by it of §5,000 each to 57
said Edison and to said Prescott, and at all times
before the 20th day of January, 1875, this defendant
had no notice whatsoever of the agreements or instru¬
ments of October 1, 1870, and April 4, 1871, alleged
in the 3d and 4th Articles of the complaint, or of any
claim by said Harrington of any light, title or inter¬
est in, or to the said inventions, or any of them, or
of any other agreement, incumbrance, assignment,
conveyance or instrument whatsoever, or of any
claim by said Harrington whatsoever that in any- 68
wise affected the said inventions and patent rights
and interests so purchased by this defendant as
nforesnid, or any of them, or any part thereof ; ex¬
cept that this defendant was informed of the terms
of said agreements between Edison and Prescott at
or about tho time of the execution thereof ; and this
defendant insists that it is a bona fide purchaser of
tho aforesaid inventions, patent rights, interests
and promises, for a good and valuable consideration,
and without any notice of either of said alleged in- 39
struments and agreements between said Harrington
and Edison, or of any claim by said Harrington of
any right, title or interest in tho said inventions,
rights and interests or any of them.

And for a further answer, this defendant says,
uiion its information and belief, that at or before the
respective times of the making of said agreements be¬
tween said Edison and Prescott, and of the fuliillment
of the terms of said agreements by said Prescott, and
at all times before the said 23rd day of January, GO
1875, the said Prescott lmd no notice of either of
tho said instruments dated Oct. 1, 1870, and April
4, 1871, between Harrington and Edison, alleged in
the 3d and 4tli Articles of tho complaint, or of any
claim by said Harrington of any right, title or inter¬
est in the said inventions or any of them, or of
any other agreement, incumbrance, assignment, con¬
veyance or instrument whatsoever, or of any claim
by said Harrington whatsoever, that in any wise
affected the said inventions, or any of them, or any

Exhibit A.

61 part thereof, and that said Prescott was a bona fide
purchaser of the inventions, patent rights and inter¬
ests mentioned and described in said instrument of
August 19, 1874, subject only to the covenants and
provisions therein set forth, for a good and valuable
consideration, and without any notice of the said
alleged instruments between Edison and Harring¬
ton or of either of them, or of any claim by said
Harrington of any rigid, title or interest in said in- (
ventions, rights and interests or any of them.

62 Wherefore this defendant demands judgment that ,
the complaint be dismissed.

PORTER, LOWREY, SOREN & STONE,

Ally's for W. U. Tel. Co.

State op New York, )

City and Comity of New York, ) ss '

v/f-mrtrmj being duly sworn, says : That the

6o defendant, is a corporation, and that he is the dri cgf
/i&tidibflhereol' ; that the foregoing answer is true, to
his own knowledge, except as to the matters therein
stated on information and belief, and that as to those
matters, he believes it to be true.

/(bcLcuSoC/o/}

64 J'trteZf

iMffQ

PRELIMINARY RECEIPT.

N. Y., Deo. 10, 1874.

Whereas, Thomas A. Edison and George B. Prescott
aro tlio inventors of cortnin improvements in tele-
. gyaphy, relntiug to duplex and qundruplex telegraph¬
ing, for which letters patont of the United States have
heeu applied for by said inventors ; and

Whereas, Said Edison and Prescott have agreed to
assign all thoir right, title and intorost in and to said
invention and lottors patont, to tlio Western Union
Tolograph' Company, providod the terms of payment
for such assignment and transfer shall bo satisfactorily
adjusted betweon tho said parties and tlio said Tele¬
graph Company :

I, the said Thomas A. Edison, horeby aoltnowiedgo
tho receipt of five thousand dollars to mo iu hand paid
in part paymont for my intorost iu tho said assign¬
ment and transfer.

Witness my hand and sonl this tonth day of Decem¬
ber, 1874.

Thomas A. Edison, [l. s.j

Witness : .

A. R. BnEWEii.

City and County of New York, ss.:

On this 21st day of January, 1876, boforo mo per¬
sonally nppoared A. R. Browor, to mo personally
known, and known to mo to bo tho subscribing wit¬
ness to tlio foregoing instrument, who, being by mo
duly sworn, said : That ho rosidod in tho oity of
Brooklyn in tho State of Now York; that ho was ao-
quaintod with Thomas A. Edison and know him to bo
tho person dosoribod in and who oxoouted said instru¬
ment. and that ho saw him oxoouto and deliver the

i same, and that lie acknowledged to liim, said A. R.
Brewer, that he executed and delivered the same, and
that thereupon he, said A. R. Brower, subscribed his
name as a witness thereto.

' H. M. Haiqii,

Notary Public,

N. Y. Co.

S New York, January 16, 1876.

Whereas, Thomas A. Edison and George B. Prescott
are the joint owners of certain improvements in Tele¬
graphy, relating to duplex and quadruples telegraph¬
ing, for which letters patent of the United States have
been applied for by said Thomas A. Edison and
Whereas, said Edison and Prescott have agreed to
assign all their right, title and interest in and to said
inventions and letters pntent, to the Western Union
Telegraph Company, provided the terms of payment
for such assignment and transfer shall bo satisfactorily
adjusted between tho said parties and tho said Tele¬
graph Company :

' I, tho said George B. Prescott, hereby aoknowledgo
the receipt of five thousand dollars to me in hand paid
in part payment for my interest in the said assignment
and transfer. ,

Witness my hand and seal this sixteenth day of Jan¬
uary, 1870.

(Signed,) /

Geouqe B. Prescott,

Witness,

(Signed,) Gerrit Smith. '

R, H. Rochester,

Treasurer:

"On the dolivory to you of this papor, pay Georgo B.

Prescott the sum of fivo thousand dollars ($5,000).

(Signod,)

William Orton,

President.

Jan. 16, 1876. , _

Rocoivcd fivo thousand dollars, Now York, January,
16th, 1875.

(Signod),

George B. Prescott.

. Paid, Jan. 16, 1876, by

Hon. Wm. Orton,

Presfc. Union Tol’gli Co.:

D’r Sir, —Your , company has over 25,000 miles of
wire, which can now bo profitably “ Qiiadruplexcd.

Considering tlieso 26,000 miles to bo already du¬
plexed, tho quadruples will pronto 50,000 miles addi-
, tional. ^

For all our patents and offorts in protecting tlie com¬
pany in tho monopoly of the same during their life, wo
will take l-20th of the average cost of maintenance of
60,000 miles of wire for 17 years, one-third down and
tho balance in yearly payments during tho above men¬
tioned period. " Half of such payments to cease tho
moment any other person shall invent and put into
praotioal operation, a quadiuplox (not infringing our
patents), upon a oirouit of 400 miles in length.

Yours, etc.,

(Signed) Tnos. A. Edison.

Geo. B. Prescott.

2d. Wo will take twenty-five thousand down for all
patants, and a royalty of §233 per year for each oironit
created.

Thomas A. Edison, Esq., and George B. Prescott
Esq. :

Gentlemen,— Boferring to the negotiations and ar¬
rangements heretofore made between you nnd tho
Western Union Telegraph Company, for tho sale and
transfer to that company of all your patents relating
to the duplex nnd quadruples telegraphy, subioot to
definite ascertainment of tho compensation to bo paid,
and especially to tho two offers in .writing made by
fows°n 01 abPUt tU° 3°th day of Dooembor last- 03 f°l-

« ^ tako twout;y-fiva thousand down

and 25,000 in six months for all patonts, nnd a
royalty on duplex of $1GG per year for oach oirouit
“created.

“2d. We will tnko twenty-five thousand down for

■ fiXS* “ •* <« - :

■ I hereby notify you, on behalf of tho Wostorn Union

‘ Telegraph Company, that tho proposition for oompen- 64
nation abovo quoted, aiud by you mnrkod “ 2d,” is
boroby accepted as made, nnd the company is ready to
close tho business at your earliest convenience, and to
mako nil tho pnymouts onllod for, upon rocoiving from
you propor assignments and transfers of the said
patents.

Yours, very respootfully,

William Orton,

President.

Electrician's Department,

Western Union Telegraph Company,
George B. Prescott,

• . Eleotrioinn.

Hon. William Orton, President.

Dear Sir Your fnvor of tho 19th instant, accept¬
ing, tho propositions heretofore made by Thomas A.
Edison nnd myself for tho sale to tho Western Union

Telegraph Company of certain inventions, nnd all our

right, titlo nnd interest of every ohnrnotor in, to, under gg
and connooted with all letters patent of the United
Statos, which may bo granted to us for improvements
in duplox nnd qnadmplox telegraphs, nnd fixing the
compensation to bo paid in accordance with our. pro¬
position mndo and marked" 2d,” on or about the 30th
day of December, camo duly to hand; nnd,- in reply,

I have to say that I am ready to unite with said
Edison in conveying all such patents or inventions, or
to assign my interest sopnratoly, if I may lawfully do

Yours, very respeottully,

George B. Presoott.

61 Exhibit D.

Two propositions :

1st. Wo will tnko twenty-five thousand down and
twenty-fivo thousand in six months for all patents,
and a royally on qundruplex of S1GG per year for each
circuit created.

Ninth. — Doilies tlmt tlio ngrcomont between hinist
Edison, roforrcd to in tlio fourteenth article, was ox
under tlio ndvico of couusel, who ivns also counsel I
defendant, tlio ‘Western Union Telegraph Coiapni
that such ngrcomont was executed under the nil'
souiiBcl for tho defendant ; tlmt tlio agreement betwee
ran and Harrington, tlioro referred to, did not iuelii
[ilex and ipindruplox tologrnphy, or either of them,
Edison was misled into executing tlio said agio
between him and this defendant.

Ho admits that at tlio timo referred to in tlio 21st f
ivas tho electrician of tho Western Union Telegraph
inriy : that ho did pay tho feos, and assist Edison,
loged in subdivision 2, down to and including tlio
‘said inventions anil improvements" in folio 23; th
Western Union Telegraph Company paid Edison ■
but not on account of tlio twenty machines referred
;ho 25tli folio, and only ns in tho thirteenth nrtiolo lie
norb fullv sot forth), and also tlmt tho Western
Holograph Company hns manufactured ninny limolini
jodying tho improvements roforrcd to in tlio fifth
rision, and is now using the same, aud denies all the
illogations of tho fourteenth nrticlo.

12 defendant says, upon his information and belief, that foi
mora than a year next preceding May, 1874, tlio dofondant
Edison had boon making experiments for tho purposo of
improving nrnl adding to tho oapaoitios of tho so-called
Stearns duplex system of telegraphy, and of making now
discoveries and inventions in dttplox, qundruploxnnd other
inodes of . multiple transmission of electric signals on tlic
same wire ; that those experiments had been errried on by
him under an arrangement witli tho defendant, tho Western
Union Telegraph Company, hereinafter referred to ns “ the
company',” whereby it had been agreed that all such oxpori

13 nionts should bo made for the benefit of the said company,
and with tho use of tolographic material, apparatus, opera
tors and other facilities furnished by it, and that all the in
voutious and improvements of tho character above named,
which should result from such experiments, were made for.
and wore to bo tho property of said company ; nnd thnt from
about tho winter and spring of 1873 until tho spring of 1874,
the said Edison had been at work upon such experiments!
and had made certain of tho desired improvements nnd in
volitions while working under said arrangement with the
dofondant compnny.

14 During tho month of May, 1874, Edison solioited this de
fondant to assist him with his skill and experience ns an
electrician, and to join him in his experiments and work
under his agreement with tho company, and offered to share
equally with tliis defendant the profits to bo derived from
tho inventions nnd improvements inado under sueli arrange
meat with the company and otherwise : nnd it resulted from

such propositions of Edison that on or about the 1st day ol
Juno, 1874, Edison and this defendant nerroed tmwtW ilmi

20 discoveries and inventions conneoted with duplex and
qimdruplox and other inodes of multiple- transmission ;
and during this period, and boforo tho nineteenth day of
August, 1874, had invented tho so-called quadrnplox mode
of transmission, and all tho improvements described in tho
applications Nos. 04 to 100, botli inclusive, and boforo tbo
thirtieth day of September, 1874, lie furnished, jointly with
this defendant, to tho company all necessary drawings,
descriptions, and specifications for experimental or practi¬
cal use by it of apparatus embodying tho said inventions
described in tho applications numbered 94 to 100, both in-

21 elusive, aud particularly tho qimdruplox invention and tlio
improvements described in application No. 99, and with
tho full knowledge and consent of said Edison put them
into practical use on its lines and in its ordinary business,
ns being its own property, and such machines and appara¬
tus have been so used by the defendant company ovor siuco
that time, with Edison’s full knowledge and consent.

And defendant says, upon liis information and belief,
tlint all tho inhttors aforesaid in respect to tho discoveries
by Edison, and tho appropriation, with bis knowledge nnd
consent, to tho uso of tho. defendant company of tho np-

22 pnrntus and machines, aud tho improvements and in voli¬
tions embodied in them, ns boforo described, were well
known to this plaintiff and to Gcorgo Harrington at or
about the dates of said several ovonts, and that neither of
them boforo January tho twenty -third, 1875, ovor questioned
or claimed anything to tho contrary of Edison’s or of de¬
fendant company’s right to do ns they respectively hnd
done, ns aforesaid.

And the defondant further says that after his dealings
with Edison began, in or about May, 1874, nnd throughout
that year to its end, Edison often reiterated the nature and

28 terms of his agreement with tho defendant company, to tho
same effect as is sot forth in folios 12, 13, 15 nnd 10 hereof;
aud after tho agreement of August lOtli, 1874, this defend¬
ant nnd Edison on tho one part, nnd tho defendant com¬
pany on the other part, always denlt together on tho
understanding nnd basis of bucIi. agreement, nnd at nil
times, and up to and after tho 20th January, 1875, it was
ngrecd and understood by this defendant nnd Edison on
tho one pnrt, and tho defondnut company on tkoothor part,

transmission, and especially of tho inventions described in
tho applications Nos. 94 to. 100, both inclusive, referred to
in tho ninth nrtiolo of tho complaint, hnd been made for
and belonged, upon their making, to tho defendant com¬
pany, and that Edison was bound under his original agree¬
ment, and this defendant was bound with him by virtue of
tlioir agreement of August tho nineteenth, 1874, to securo
all said improvements and inventions by proper instru¬
ments, and by assignment of letters patent therefor, when,
procured, to tho defendant company. 2i

* And this boiug tho agreement nnd understanding of all
tho parties, aud there being no point undetermined botwcon
them in respect to said inventions and improvements and
letters patent, except tho ascertaining tho prcciso amount
to ho paid for thorn ; and it having been also understood
and agreed that this should bo ascertained in duo time,
either by. agreement of tho parties, or, if that failed, by
arbitration, on tbo tontli day of December, 1874, tho said
Edison, and about tho sixteenth day of January^ 1875,

this dcfcudnnt asked and received of tho defendant c<
pnnv tho respective payments of ilvo thousand dollars 21
each, in anticipation of tho fixing of tho definite price
aforesaid, and on account thereof, nnd then severally exe¬
cuted and delivered to the dof 1 t co i i f tlio instru¬
ments, copies whereof nro horoto annexed, marked Exhibits

^ And oil tlio sixteenth and thirtieth days of December,
1«7.1 H.i« iinfnnilniit niul Edison submitted propositions in

1874, this defendant nnd Edison submitted propositions u
' writing ns to tho amount of sueli price, copies whereof nr-

hereto annoxed, marked Exhibits O and D ; and tho last of
said propositions remaining .open up to tho 19 th of January,

1875, and tho ngreomont and understanding of said parties 27
ns to tho exclusive right and ownership of tho company m
and to all tlio inventions nnd improvements tliorctoforo
made by said Edison, connected with duplex nnd qundru-
plex telegraphy, remaining us aforesa

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